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
The amendments filed with the written response received on January 27, 2026 have been considered and an action on the merits follows. As directed by the amendment, claims 1, 11 and 17-18 have been amended and claim 3 has been canceled and claims 7-9 withdrawn. Accordingly, claims 1-2, 4-18 are pending in this application, with an action on the merits to follow regarding claims 1-2, 4-6 and 10-18.
Because of the applicant’s amendment, the following in the office action mailed September 19, 2025 are hereby withdrawn:
Previous rejections under 35 U.S.C. 112(a).
Previous rejections under 35 U.S.C. 112(b).
Response to Arguments
Applicant’s arguments with respect to claims 1, 2, 4-6 and 10-18 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.
Election/Restrictions
Applicant's election with traverse of Species A, directed to an article of footwear as illustrated in Figs. 1-8 in the reply filed on November 04, 2023 is acknowledged. The traversal is on the ground(s) that the Examiner's proposed Species A should not be further separated into Group I including Species Al or Group II including Species A2 and A3, A4 or A5 because a search for Species A would naturally encompass midsoles with different thicknesses and materials in Groups I and II. Also, the claims in the present application do not include the subject matter of Species Al, A2, A3, A4 and A5. This is not found to be persuasive because the Species Al, A2, A3, A4 and A5 will be a burden on the Examiner to search the embodiments (Species Al, A2, A3, A4 and A5) if brought into future claim limitations, as the Applicant begins to claim multiple embodiments with a midsole that has two different thickness ranges and a shoe upper that has three different upper materials. Examiner is arguing that the species election relates to the different embodiments that the Applicant has provided.
The requirement is still deemed proper and is therefore made FINAL.
Claims 7-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected, Species C - directed to footwear with upper with shell using removable strip as illustrated in Fig. 11. Applicant timely traversed the restriction (election) requirement in the reply filed on November 04, 2024.
Therefore claims 7 - 9 are withdrawn at this time.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 11 and 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application Publication No. US 2015/0289590 A1 to DAVID P. JONES, (herein after "Jones").
As to Claim 1, Jones discloses an article of footwear (footwear system 101; Jones ~ regarding an article of footwear) comprising: an upper (upper 102; Jones); a sole (sole structure 110, 210; Jones) attached to the upper (upper 102; Jones), the sole (sole structure 110, 210; Jones) including a shell (midsole 112; Jones) and an outsole (outsole 114; Jones) attached to the shell (midsole 112; Jones), wherein the shell (midsole 112; Jones) includes a bottom wall (bottom portion 204; Jones) and a peripheral wall that extends from the bottom wall (front peripheral portion 206, rear peripheral portion 208, 210; Jones ~ regarding a peripheral wall that extends from the bottom wall), the peripheral wall (front peripheral portion 206, rear peripheral portion 208; Jones ~ regarding a peripheral wall that extends from the bottom wall) and bottom wall (bottom portion 204; Jones) defining an interior space (Figures 1-4; Jones ~ regarding an interior space) within the shell (midsole 112; Jones) (Figures 1 – 4 and Paragraphs 0026-0033; Jones); and a midsole (removable insert 152, 154; Jones ~ regarding a midsole) integrally formed (The term "integral" is defined simply as "formed as a unit with another part." Merriam-Webster's Collegiate Dictionary 607 (10th ed. 1999). And the Federal Circuit has repeatedly found, in the context of particular patents, that the patentee's use of the term "integral" encompassed both a unitary object and an object with multiple attached parts. See In re Larson, 340 F.2d 965, 967–68 (C.C.P.A. 1965); Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 887 F.2d 1070, 1073–74 (Fed. Cir. 1989); Henderson v. Grable, 339 F.2d 465, 470 (C.C.P.A. 1964); In re Morris, 127 F.3d 1048, 1055–56 (Fed. Cir. 1997) Integral argument)(Paragraphs 0035, 0053; Jones ~ regarding being integrally formed (made)) as a single component that extends from a front end to a rear end of the shell (midsole 112; Jones) and across a width of the shell (midsole 112; Jones) (Figures 1-3 and Paragraphs 0026-0033, 0035-0036; Jones), wherein the midsole (removable insert 152, 154; Jones ~ regarding a midsole) is positioned in the interior space (Figures 1-4 and Paragraph 0033; Jones ~ regarding an interior space) and is removably attached to the shell (midsole 112; Jones)(Paragraph 0033; Jones regarding being removably attached to the shell), and wherein the entire midsole (removable insert 152, 154; Jones ~ regarding a midsole) is removable from the interior space (midsole 112; Jones) of the shell (midsole 112; Jones)(Paragraph 0033; Jones regarding being removable from the interior space of the shell).
As to Claim 6, Jones discloses the article of footwear of claim 1, wherein a thickness (thickness 280; Jones) of the shell (midsole 112; Jones) varies along at least one of a length (280; Jones) and a width (282; Jones) of the midsole (removable insert 152, 154; Jones ~ regarding a midsole)(Paragraph 0056; Jones ~ regarding thickness).
As to Claim 10, Jones discloses the article of footwear of claim 1, further comprising a plurality of midsoles (Paragraphs 0017, 0046 teaching other inserts ~ regarding a plurality of midsoles) (removable insert 152, 154; Jones ~ regarding a midsole), wherein at least two of the midsoles (removable insert 152, 154; Jones ~ regarding a midsole) are made with a different material, and one of midsoles (removable insert 152, 154; Jones ~ regarding a midsole) is positioned in the interior space (cavity or cavity 230; Jones ~ regarding the interior space) of the shell (midsole 112; Jones)(Figure 1-7 and Paragraphs 0034-0035, 0046; Jones ~ regarding different materials or components for the midsoles).
As to Claim 11, Jones discloses a sole (sole structure 110, 210; Jones) for an article of footwear (footwear system 101; Jones ~ regarding an article of footwear), the sole (sole structure 110, 210; Jones) comprising: a shell (midsole 112; Jones) a bottom wall (bottom portion 204; Jones) and a peripheral wall that extends from the bottom wall (front peripheral portion 206, rear peripheral portion 208, 210; Jones ~ regarding a peripheral wall that extends from the bottom wall 204), the shell (midsole 112; Jones) defining an interior space (Figures 1 - 4; Jones ~ regarding an interior space); an outsole (outsole 114; Jones) attached to a bottom surface of the shell (midsole 112; Jones); and a midsole (removable insert 152, 154; Jones ~ regarding a midsole) (The term "integral" is defined simply as "formed as a unit with another part." Merriam-Webster's Collegiate Dictionary 607 (10th ed. 1999). And the Federal Circuit has repeatedly found, in the context of particular patents, that the patentee's use of the term "integral" encompassed both a unitary object and an object with multiple attached parts. See In re Larson, 340 F.2d 965, 967–68 (C.C.P.A. 1965); Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 887 F.2d 1070, 1073–74 (Fed. Cir. 1989); Henderson v. Grable, 339 F.2d 465, 470 (C.C.P.A. 1964); In re Morris, 127 F.3d 1048, 1055–56 (Fed. Cir. 1997) Integral argument)(Paragraphs 0035, 0053; Jones ~ regarding being integrally formed (made)) as a single component that extends from a front end to a rear end of the shell (midsole 112; Jones) and across a width of the shell (midsole 112; Jones), wherein the midsole (removable insert 152, 154; Jones ~ regarding a midsole) is positioned in the interior space (Figures 1-4 and Paragraph 0033; Jones ~ regarding an interior space) and is removably attached to the shell (midsole 112; Jones) (Figures 1-3 and Paragraphs 0026-0033; Jones), wherein the midsole (removable insert 152, 154; Jones ~ regarding a midsole) is positioned in the interior space and is removably attached to the shell), and wherein the entire midsole (removable insert 152, 154; Jones ~ regarding a midsole) is removable from the interior space of the shell (midsole 112; Jones) (Paragraph 0033; Jones regarding being removable from the interior space of the shell).
As to Claim 15, Jones discloses the sole of claim 11, wherein a thickness (thickness 280; Jones) of the shell (midsole 112; Jones) varies along at least one of a length and a width of the midsole (removable insert 152, 154; Jones ~ regarding a midsole)(Paragraph 0056; Jones ~ regarding thickness).
As to Claim 16, Jones discloses the article of footwear of claim 11, further comprising a plurality of midsoles (Paragraphs 0017, 0046 teaching other inserts ~ regarding a plurality of midsoles) (removable insert 152, 154; Jones ~ regarding a midsole), wherein at least two of the midsoles (removable insert 152, 154; Jones ~ regarding a midsole) are made with a different material, and one of midsoles (removable insert 152, 154; Jones ~ regarding a midsole) is positioned in the interior space (cavity or cavity 230; Jones ~ regarding the interior space) of the shell (midsole 112; Jones) (Figure 1-7 and Paragraphs 0034, 0046; Jones ~ regarding different materials or components for the midsoles).
As to Claim 17, Jones discloses the article of footwear of claim 1, wherein the midsole (removable insert 152, 154; Jones ~ regarding a midsole) is made with a single material (Paragraphs 0035 ~ regarding, Jones teaches “In some embodiments, first removable insert 152 and second removable insert 154 may each be made of a foam material”. Thereby teaching being made with a single material.)
As to Claim 18, Jones discloses the sole of claim 11 wherein the midsole (removable insert 152, 154; Jones ~ regarding a midsole) is made with a single material (Paragraphs 0035 ~ regarding, Jones teaches “In some embodiments, first removable insert 152 and second removable insert 154 may each be made of a foam material”. Thereby teaching being made with a single material).
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 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.
Claims 2, 4-5, and 12-14 are rejected under 35 U.S.C. § 103 as being unpatentable over United States Patent Application Publication No. US 2015/0289590 A1 to DAVID P. JONES, (herein after "Jones") in view of United States Patent Application Publication No. US 2022/0225731 A1 to Bafia Salum Mkumba, (herein after "Mkumba”).
As to Claim 2, Jones discloses the article of footwear of claim 1, wherein a thickness of the midsole (removable insert 152, 154; Jones ~ regarding a midsole) a thickness of the shell (midsole 112; Jones)(Paragraphs 0056-0057; Jones ~ regarding the thickness of the shell being variable and varying in vertical position, which would teach that a thickness of the midsole is capable of being greater than a thickness of the shell.)
Although Jones teaches that the thickness of the shell can be varied, Jones does not explicitly disclose being greater than a thickness of the shell.
Mkumba teaches footwear midsole comprising a support and one or more internal bladders and discloses the midsole (bladder 55; Mkumba) is greater than a thickness (thickness 51; Mkumba) of the shell (midsole 40 as configured to include hollow support 50; Mkumba) (Paragraphs 0044 &0056; Mkumba, teaching wherein a thickness of the midsole is greater than a thickness of the shell. "…the height of the filled bladders can exceed the height of the sidewall.”).
Therefore, based on Mkumba’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Jone’s midsole to include the midsole being greater than a thickness of the shell, as doing so would provide comfort and shock absorption to the user’s foot (para. 0002; Mkumba).
As to Claim 4, Jones discloses the article of footwear of claim 1, wherein a thickness of the midsole (removable insert 152, 154; Jones ~ regarding a midsole) but fails to disclose varying along at least one of a length and a width of the midsole.
Mkumba teaches footwear midsole comprising a support and one or more internal bladders and the midsole (bladder 55; Mkumba) and discloses varying along at least one of a length and a width of the midsole (Figure 6b; Mkumba, teaching wherein a thickness of the midsole (bladder 55; Mkumba, varies along at least one of a length and a width of the midsole. See annotated Figure 6b below teaching wherein the thickness of the midsole in a length varies along a length of the midsole as it tapers from the heel to the toe; Mkumba. In addition paragraph 0050; Mkumba teaches “(Paragraph 0050; Mkumba~ teaching midsoles being made of different material, “In other variations, at least one bladder 55 varies compared to a second bladder with respect to size, shape, volume, material, fluid, and/or any other characteristic.”)).
Therefore, based on Mkumba’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Jones’s midsole to include varying along at least one of a length and a width of the midsole, as doing so would provide comfort and shock absorption to the user’s foot (para. 0002; Mkumba).
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As to Claim 5, Jones/ Mkumba disclose the article of footwear of claim 4, wherein a thickness (thickness 280; Jones) of the shell (midsole 112; Jones) varies along at least one of a length (280; Jones) and a width (282; Jones) of the midsole (removable insert 152, 154; Jones ~ regarding a midsole)(Paragraph 0056; Jones ~ regarding thickness).
As to Claim 12, Jones discloses the sole of claim 11, wherein a thickness of the midsole (removable insert 152, 154; Jones ~ regarding a midsole) a thickness of the shell (midsole 112; Jones)(Paragraphs 0056-0057; Jones ~ regarding the thickness of the shell being variable and varying in vertical position, which would teach that a thickness of the midsole is capable of being greater than a thickness of the shell.)
Although Jones teaches that the thickness of the shell can be varied, Jones does not explicitly disclose being greater than a thickness of the shell.
Mkumba teaches footwear midsole comprising a support and one or more internal bladders and discloses the midsole (bladder 55; Mkumba) is greater than a thickness (thickness 51; Mkumba) of the shell (midsole 40 as configured to include hollow support 50; Mkumba) (Paragraphs 0044 &0056; Mkumba, teaching wherein a thickness of the midsole is greater than a thickness of the shell. "…the height of the filled bladders can exceed the height of the sidewall.”).
Therefore, based on Mkumba’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Jone’s midsole to include the midsole being greater than a thickness of the shell, as doing so would provide comfort and shock absorption to the user’s foot (para. 0002; Mkumba).
As to Claim 13, Jones discloses the sole of claim 11, wherein a thickness of the midsole (removable insert 152, 154; Jones ~ regarding a midsole) but fails to disclose varying along at least one of a length and a width of the midsole.
Mkumba teaches footwear midsole comprising a support and one or more internal bladders and the midsole (bladder 55; Mkumba) and discloses varying along at least one of a length and a width of the midsole (Figure 6b; Mkumba, teaching wherein a thickness of the midsole (bladder 55; Mkumba, varies along at least one of a length and a width of the midsole. See annotated Figure 6b below teaching wherein the thickness of the midsole in a length varies along a length of the midsole as it tapers from the heel to the toe; Mkumba. In addition paragraph 0050; Mkumba teaches “(Paragraph 0050; Mkumba~ teaching midsoles being made of different material, “In other variations, at least one bladder 55 varies compared to a second bladder with respect to size, shape, volume, material, fluid, and/or any other characteristic.”)).
Therefore, based on Mkumba’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Jones’s midsole to include varying along at least one of a length and a width of the midsole, as doing so would provide comfort and shock absorption to the user’s foot (para. 0002; Mkumba).
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As to Claim 14, Jones/Mkumba disclose the sole of claim 13, wherein a thickness (thickness 280; Jones) of the shell (midsole 112; Jones) varies along at least one of a length (280; Jones) and a width (282; Jones) of the midsole (removable insert 152, 154; Jones ~ regarding a midsole)(Paragraph 0056; Jones).
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 AKWOKWO REDHEAD whose telephone number is (571)272-7581. The examiner can normally be reached Monday - Friday 9:00 AM to 4:00pm EST.
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/AKWOKWO OLABISI REDHEAD/Examiner, Art Unit 3732
/ALISSA L HOEY/Primary Examiner, Art Unit 3732
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