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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 13, 2025 has been entered.
Response to Amendment
The amendments filed with the written response received on July 10, 2025 (the amendments were filed after-final on July 10, 2025, and the RCE filed on August 13, 2025 referenced those amendments for formal entry) have been considered and an action on the merits follows. As directed by the amendment, claim 1 has been amended; claims 2, 5, 6 and 11 are canceled; claims 3, 4, 9 and 10 are withdrawn from further consideration. Accordingly, claims 1, 3, 4, 7-10 are pending in this application, with an action on the merits to follow regarding claims 1, 7 and 8.
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.
Claims 1, 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Mueller (DE 19547276 A1) in view of Edwin (EP 2510817 A1).
Regarding independent claim 1, Mueller discloses a waterproof shoe (watertight shoe #10; Page 1, first paragraph (of the English translation document of Mueller) under “Description” heading refers to it as a waterproof shoe), comprising: a waterproof shoe upper (upper #12 in combination with lining #14), wherein a bottom portion of the waterproof shoe upper is open (the upper #12 and lining #14 are structured to have a gap in a bottom portion thereof, the gap being occupied by midsole #22; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)), the bottom portion of the waterproof shoe upper is provided with a connecting member for limiting a periphery of the bottom portion of the waterproof shoe upper from extending outwardly (midsole #22 is a connecting member; the seam #24 prevents the upper from extending outwardly from the edge of the midsole #22), and the connecting member is configured to connect a plurality of positions on the periphery of the bottom portion of the waterproof shoe upper (see Fig. 2, which shows sewn seam #24 connecting all of the midsole #22 to the upper #12; i.e. the seam is present in a plurality of positions on the periphery of the bottom of the upper #12); a sealing layer (material that forms the outsole #18 is a sealing layer; Page 5, second paragraph and Page 6, third complete paragraph (of the English translation document of Mueller) refers to the outsole providing a seal against water on the underside of the shoe), wherein the sealing layer is injection-molded at the bottom portion of the waterproof shoe upper and penetrates into the periphery of the bottom portion of the waterproof shoe upper (Page 5, second-to-last paragraph (of the English translation document of Mueller) describes the sole #18 as being injection molded with its plastic permeating into and through the midsole #22; Page 6, first full paragraph describes the injection molding occurring in the direction of arrow #32 in Fig. 1, which starts from the bottom and fills upward), and the sealing layer and the waterproof shoe upper are enclosed to form a waterproof shoe cover with a sealed bottom portion (see Figs. 1-2 show how the outsole #18 (i.e. sealing layer) and the upper together form an enclosure for rendering the shoe waterproof and the bottom portion sealed);; wherein the connecting member comprises a mid-sole (as noted above), a periphery of the mid-sole and the periphery of the bottom portion of the waterproof shoe upper are butted and sewn together (see sewn seam #24 in Fig. 2, around the periphery of the bottom portion of the upper #12; Fig. 1 shows the midsole #22 periphery butted with the bottom edge of upper #12), a part of the sealing layer fills and seals a gap between the mid-sole and the periphery of the bottom portion of the waterproof shoe upper (at least part of the injection molded outsole #18 (i.e. part of sealing layer) fills a gap between the midsole #22 and the periphery of the bottom portion of the upper #12, in part at gap/space #34; Page 6, first and third paragraphs; Page 7, second-to-last paragraph (of the English translation document of Mueller); Examiner notes that the term "part" is very broad and merely means "a portion, division, piece, or segment of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)), a part of the sealing layer is located on a lower side of the periphery of the bottom portion of the waterproof shoe upper and forms a sealing bottom layer (see Fig. 1; part of outsole #18 (i.e. sealing layer) is located on a lower side of the periphery of the bottom portion of the upper #12 and in part forms a sealing bottom layer), a part of the sealing layer penetrates into the mid-sole (as noted above), and a part of the sealing layer is located on an upper side of the periphery of the bottom portion of the waterproof shoe upper and forms a sealing inner layer (at least part of the outsole #18 is located above and on the upper side of the periphery of the bottom portion of the upper #12 to form a sealing inner layer; Fig. 1). Mueller is silent to specifying any dimensions, and is therefore silent as to whether a thickness of the sealing layer is less than 15 mm, a thickness of the sealing bottom layer is less than 8 mm, and a thickness of the sealing inner layer ranges from 0.5 mm to 1 mm. Mueller is also silent to there being a further shoe sole located on a lower side of the existing outsole #18 (i.e. sealing layer) and adhered thereto.
Edwin teaches a shoe with a sole that includes an outsole that comprises polyurethane (see paragraph spanning pages 2 and 3 of the English translation document of Edwin), wherein the outsole is formed of two layers, the lower outsole layer being a thin lacquer polymer layer disposed on the underside of the upper outsole layer (see Abstract). Edwin teaches that the outsole layer can have a thickness range, in particular from 1 to 10 mm (see paragraph spanning pages 2 and 3 of the English translation document of Edwin).
Mueller and Edwin teach analogous inventions in the field of outsoles that include polyurethane. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have added a thin lacquer polymer coating layer on the bottom surface of the existing outsole layer #18 in Mueller, in order to provide additional wear resistance to the shoe, as taught by Edwin (page 2, second full paragraph), and further since the concept of multilayered outsoles is well-known in the art of footwear. Further, absent a showing of criticality with respect to a thickness of the sealing layer being less than 15 mm, a thickness of the sealing bottom layer being less than 8 mm, and a thickness of the sealing inner layer ranging from 0.5 mm to 1 mm (Applicant’s Specification provides no reasoning or unexpected test results showing why these particular thickness ranges would be beneficial over some other thickness ranges), it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art for the thickness of the outsole layer #18 (i.e. the overall sealing layer) to have been, in particular, up to 10 mm (as taught by Edwin, wherein its disclosed range of 1-10 mm would be “less than 15 mm”), in order to limit the weight of the shoe and reduce the materials cost. As a result of the modification, there would have been a reasonable expectation for the thickness of the sealing bottom layer (i.e. the part of the outsole #18 below the midsole #22) to have been less than 8 mm and the thickness of the sealing inner layer (i.e. the part of the outsole #18 material that permeates up through and rises above the midsole #22 and on an upper side of the periphery of the upper’s bottom portion) ranging from 0.5 mm to 1 mm, due to there being a general finite number of identified, predictable potential solutions to proportioning the amount of outsole material above and below the midsole in the shoe #10 of Mueller (see MPEP 2143(I)(E)), and further since 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(II)(A)).
Regarding claim 7, the modified shoe of Mueller (i.e. Mueller in view of Edwin, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further teaches that the sealing layer is a polyurethane (PU) layer or a rubber layer (see Page 5, last two full paragraphs in the English translation of Mueller, which cites that the outsole #18 is molded plastic which is polyurethane).
Regarding claim 8, the modified shoe of Mueller (i.e. Mueller in view of Edwin, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further teaches that the waterproof shoe upper consists of at least one piece of composite waterproof fabric (lining #14, which is part of the overall shoe upper, as noted above, is a laminate (i.e. composite) and waterproof (see third-to-last full paragraph in Page 5 of the English translation of Mueller)), the composite waterproof fabric comprises a waterproof layer (“functional layer” of lining #14 is a microporous membrane that is waterproof and water vapor permeable), an outer fabric and an inner fabric (functional layer of lining #14 is protected on both sides by cover layers made of textile material (i.e. inner and outer fabric layers for the composite lining), the outer fabric is adhered to an outer side surface of the waterproof layer, and the inner fabric is adhered to an inner side surface of the waterproof layer (as noted above).
Response to Arguments
In view of Applicant's amendment, the search has been updated, and new prior art has been identified and applied. Applicant's arguments have been considered but are moot in view of the new ground(s) of rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All art cited on the PTO-892 and not relied upon in an art rejection above is deemed relevant in the field of footwear with waterproofing attachment between the upper and sole structure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMESON COLLIER whose telephone number is (571)270-5221. The examiner can normally be reached Monday - Friday 8 am - 5 pm.
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/JAMESON D COLLIER/Primary Examiner, Art Unit 3732