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 .
Response to Amendment
The amendments filed on 10/29/2025 have been entered. Claims 1-20 remain pending in the application, with Claims 1, 3, 5, 7, 8, and 15-19 being newly amended. Applicant’s amendments to the Claims have overcome each and every objection previously set forth in the Non-final Office Action mailed 10/29/2025.
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 (see Claim 8). 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.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: adhesive means in claim 14.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claims 1, 8, and 15, the recitation “one or more telescoping expansion sections” renders the claim indefinite. It is not clear how one expansion section (as the use of only one expansion section is covered by the claim language) is capable of telescoping. While two or three expansion sections could clearly telescope, or slide inwards to overlap with one another, it is not clear how a single panel would collapse in on its self. For at least these reasons, Claims 1, 8, and 15 are considered indefinite.
Claims 2-7 depend from Claim 1, and are likewise rejected under 35 U.S.C. 112(b) due to dependency.
Claims 9-14 depend from Claim 8, and are likewise rejected under 35 U.S.C. 112(b) due to dependency.
Claims 16-20 depend from Claim 15, and are likewise rejected under 35 U.S.C. 112(b) due to dependency.
Further regarding Claim 8, the recitation of “an upper comprising one or more telescoping expansion sections” and “one or more movable sections configured to slidably or removably couple to at least one of the upper and the sole” render the claim indefinite. The telescoping expansion sections and the moveable sections appear to be referring to the same structure. Therefore, it is not clear if there are two different telescoping or movable sections attached to the upper, or if these recitations are referring to the same structure. For purposes of examination, the telescoping expansion sections and moveable sections will be considered as referring to the same structure, as there is no support in the originally filed specification for two different telescoping and/or movable sections on the upper.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 2, and 4-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ha (US 2004/0107604).
Regarding Claim 1 in view of the indefiniteness as explained above, Ha teaches a modular shoe system (1) comprising: a sole (2, 4); and an upper (3) removably coupled to the sole (fig. 1 shows the upper (3) being coupled to the sole (2, 4), Examiner notes that as the upper is capable of being removed from the sole and as such the upper is considered to be removably coupled absent further distinguishing limitations), the upper comprising an arch bandage (see annotated Fig.) removably coupled to a toe vamp (see annotated Fig.) (annotated fig. 1 shows the arch bandage being coupled to the toe vamp, Examiner notes that as the arch bandage is capable of being removed from the toe vamp and as such the arch bandage is considered to be removably coupled absent further distinguishing limitations), wherein the arch bandage and toe vamp are configured to removably couple to one or more telescoping expansion sections (40) (fig. 1 shows arch bandage and toe vamp being coupled to the expansion section (40), Examiner notes that as the arch bandage and toe vamp is capable of being removed from the expansion section and as such arch bandage and toe vamp is considered to be removably coupled absent further distinguishing limitations. Examiner notes that as the expansion section is capable of condensing from its longest state, it is considered to be telescoping. paragraph [0062] teaches “the upper tension member 40 provided at the upper 4 of the shoe 1 is made of elastic rubber material which is extended and restored by application and release of external force,” wherein the extension and restoration is considered equivalent to telescoping), the expansion sections configured to vary at least one of a length or width of the modular shoe system (paragraph [0062] teaches “the upper tension member 40 provided at the upper 4 of the shoe 1 is made of elastic rubber material which is extended and restored by application and release of external force,” therein the expansion section can clearly vary the length of the modular shoe system).
Regarding Claim 2, Ha teaches all of the limitation of the modular shoe system of Claim 1, as discussed in the rejections above. Ha further teaches wherein the sole (2, 4) comprises a midsole (2) removably coupled to an outer sole (4) (fig. 1 shows the midsole (2) being coupled to the outer sole (4), and as both the midsole (2) and the outer sole (4) move relative to one another they are clearly removably coupled to one another; paragraph [0060] teaches “To accommodate the increased length of the insole 2 after the adjustment of a length of the insole 2… the outsole 4 of the sole 1 is provided with the lower tension member 50. Consequently, after the adjustment of a length of the insole 2, the upper and lower tension members 40 and 50 extend by the increased length of the insole 2”).
Regarding Claim 4, Ha teaches all of the limitation of the modular shoe system of Claim 2, as discussed in the rejections above. Ha further teaches wherein the midsole (2) is configured to vary in length (paragraph [0059] teaches “A distance between the adjacent teeth of the spur gear 12-1, and the racks 11a and 11b is preferably set such that a total length of the first insole joint part 11 and the second insole joint part 12 is increased in increments of any distance between 1 mm to 1.3 mm at a time, thereby allowing a total length of the insole 2 to be finely adjusted,” therein the midsole (2), which is considered as equivalent to the insole, is clearly configured to vary in length), and wherein the outer sole (4) is configured to vary in length (paragraph [0060] teaches “To accommodate the increased length of the insole 2 after the adjustment of a length of the insole 2… the outsole 4 of the sole 1 is provided with the lower tension member 50. Consequently, after the adjustment of a length of the insole 2, the upper and lower tension members 40 and 50 extend by the increased length of the insole 2”).
Regarding Claim 5, Ha teaches all of the limitation of the modular shoe system of Claim 1, as discussed in the rejections above. Ha further teaches wherein the upper (3) further comprises an eyestay (see annotated Fig.) configured to couple to at least one of the one or more expansion sections (40) (annotated fig. 8 shows an eyestay configured to couple to the expansion section (40)), and wherein the upper further comprises a heel counter (see annotated Fig.) removably coupled to the arch bandage (annotated fig. 1 shows the heel counter coupled to the arch bandage via the expansion section (40), Examiner notes that as the arch bandage is capable of being removed from the expansion section and heel counter and as such the arch bandage is considered to be removably coupled absent further distinguishing limitations).
Regarding Claim 6, Ha teaches all of the limitation of the modular shoe system of Claim 1, as discussed in the rejections above. Ha further teaches wherein one or more portions of the sole are configured to slidably retract behind other portions of the sole in a closed position and extend from the other portions in an open position (figs. 2 and 3 show portion (12-2) being configured to slideably retract behind portion (11-1) in a closed position and extend from the portion (11-1) in the open position).
Regarding Claim 7, Ha teaches all of the limitation of the modular shoe system of Claim 1, as discussed in the rejections above. Ha further teaches where each of the one or more telescoping expansion sections (40) is configured to increase a length or width of the modular shoe system by a specified increment (paragraph [0059] teaches “A distance between the adjacent teeth of the spur gear 12-1, and the racks 11a and 11b is preferably set such that a total length of the first insole joint part 11 and the second insole joint part 12 is increased in increments of any distance between 1 mm to 1.3 mm at a time” and paragraph [0060] teaches “, after the adjustment of a length of the insole 2, the upper and lower tension members 40 and 50 extend by the increased length of the insole 2,” therein the expansion section (40) can clearly increase the length of the shoe by the specified increment of 1-1.3 mm).
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Claim(s) 15 and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Delaney (US 2014/0053433).
Regarding Claim 15 in view of the indefiniteness as explained above, Delaney teaches a method comprising: forming a modular shoe system; and removably coupling one or more components of the modular shoe system to vary a size, shape, appearance, or purpose of the modular shoe system (figs. 5-8 show the modular shoe system being formed, and one or more components (19, 20, 28) being coupled to vary the appearance and purpose of the shoe), wherein the one or more components include one or more telescoping expansion sections (25) configured to vary at least one of a length or width of the modular shoe system (the telescoping expansion section (25) can clearly vary the length of the upper of the modular shoe system, and as the expansion section is capable of being made more compact, by squishing or other similar manipulation, it is considered to be telescoping).
Regarding Claim 18, Delaney teaches all of the limitation of the modular shoe system of Claim 15, as discussed in the rejections above. Delaney further teaches wherein forming a modular shoe system comprises forming an upper by removably coupling one or more of: a heel counter (28); an eyestay; an arch bandage (20); and a toe vamp (19) (figs. 4-7 show the upper being formed by removably coupling a heel counter (28), arch bandage (20) and toe vamp (19)).
Regarding Claim 19, Delaney teaches all of the limitation of the modular shoe system of Claim 18, as discussed in the rejections above. Delaney further teaches wherein removably coupling the one or more components comprises removably coupling the one or more telescoping expansion sections (25) between the arch bandage (20) and the toe vamp (19) (figs. 4-8 show the expansion section (25) being removably coupled between the arch bandage (20) and the toe vamp (19)).
Regarding Claim 20, Delaney teaches all of the limitation of the modular shoe system of Claim 15, as discussed in the rejections above. Delaney further teaches wherein the one or more components (19, 20, 28) include one or more of: interlocking fasteners (17, 18); a zipper; buttons; clips; hooks; fasteners; snaps; slide seals; strings; or ties (fig. 5 shows the components (19, 20, 28) including interlocking fasteners (17, 18)).
Claim Rejections - 35 USC § 103
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.
Claim(s) 3 and 8-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ha (US 2004/0107604) in view of Waatti (US 9756899).
Regarding Claim 3, Ha teaches all of the limitation of the modular shoe system of Claim 2, as discussed in the rejections above.
Ha does not teach wherein midsole further comprises one or more vias configured to receive a portion of the one or more telescoping expansions sections, and wherein the midsole is configured to removably couple to the one or more telescoping expansion sections.
Attention is drawn to Waatti, which teaches an analogous article of footwear. Waatti teaches a modular shoe system (100) comprising: a sole (110); and an upper (102) removably coupled to the sole (col. 5 ll. 40-45 teaches “upper 102 may attach to sole structure 110 by using a plurality of elongated members 200 (also referred to hereafter as simply elongated members 200). In at least some embodiments, elongated members 200 may be mechanical connectors that facilitate the connection of an upper to a sole structure,” therein the upper is clearly removably coupled to the sole), the upper comprising an arch bandage (see annotated Fig.) removably coupled to a toe vamp (see annotated Fig.) (annotated fig. 1 shows the arch bandage being coupled to the toe vamp, Examiner notes that as the arch bandage is capable of being removed from the toe vamp and as such the arch bandage is considered to be removably coupled absent further distinguishing limitations), wherein the arch bandage and toe vamp are configured to removably couple to one or more expansion sections (see annotated Fig.) (fig. 1 shows arch bandage and toe vamp being coupled to the expansion section (40), Examiner notes that as the arch bandage and toe vamp is capable of being removed from the expansion section and as such arch bandage and toe vamp is considered to be removably coupled absent further distinguishing limitations), the expansion sections configured to vary at least one of a length or width of the modular shoe system (fig. 7 shows the expansion section being laced together, therein the width of the shoe system can clearly be varied by the expansion section) and wherein the sole comprises a midsole (fig. 1 shows the sole (110) comprising a midsole that is configured to support a wearer’s footbed). Waatti further teaches wherein midsole (110) further comprises one or more vias (300) configured to receive a portion of the one or more expansions sections, and wherein the midsole is configured to removably couple to the one or more expansion sections (figs. 7-9 show the upper (102), including the expansion section, having structures (200) being received in the vias (300), allowing the midsole to be removably coupled to the expansion section).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ha to include the teachings of Waatti such that the midsole further comprises one or more vias configured to receive a portion of the one or more telescoping expansions sections, and wherein the midsole is configured to removably couple to the one or more telescoping expansion sections so as to allow the expansion sections to be replaced as needed (col. 10 ll. 8-16, “In other words, elongated members 200 may be removed from sole structure 110 without destroying, tearing, and/or breaking either upper 102 and/or sole structure 110. This allows components of article of footwear 100 to be interchangeable. For example, upper 102 may be connected to a new sole structure (not shown) which may replace sole structure 110 that becomes damaged. Or, the new sole structure may offer a different comfort or feel.”).
Regarding Claim 8 in view of the indefiniteness as explained above, Ha teaches a shoe (1) comprising: a sole (2, 4); an upper (3) one or more telescoping expansion sections (40) (Examiner notes that as the expansion section is capable of condensing from its longest state, it is considered to be telescoping. paragraph [0062] teaches “the upper tension member 40 provided at the upper 4 of the shoe 1 is made of elastic rubber material which is extended and restored by application and release of external force,” wherein the extension and restoration is considered equivalent to telescoping); and one or more movable sections (40) configured to slidably or removably couple to at least one of the upper and the sole (paragraph [0062] teaches “the upper tension member 40 provided at the upper 4 of the shoe 1 is made of elastic rubber material which is extended and restored by application and release of external force,” therein the expansion section (40) is clearly slideably coupled to the sole. Further, Examiner notes that as the expansion section is capable of being removed from the upper and as such the expansion section is considered to be removably coupled to the upper absent further distinguishing limitations. As noted in the 35 U.S.C. 112(b) rejection above, Examiner is considering the one or more telescoping expansion section and the one or more moveable sections as the same structure).
Ha does not teach an adhesive means configured to removably couple the one or more telescoping expansion sections to the sole.
Attention is drawn to Waatti which teaches an analogous article of footwear. Waatti teaches a shoe (110) comprising: a sole (110); an upper (102) comprising an adhesive means (200) configured to removably couple to the sole (col. 10 ll. 8-12, “In other words, elongated members 200 may be removed from sole structure 110 without destroying, tearing, and/or breaking either upper 102 and/or sole structure 110. This allows components of article of footwear 100 to be interchangeable.”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ha to include the teachings of Waatti such that the upper includes an adhesive means configured to removably couple the one or more telescoping expansion sections to the sole so as to allow the upper to be replaced as needed (col. 10 ll. 8-16, “In other words, elongated members 200 may be removed from sole structure 110 without destroying, tearing, and/or breaking either upper 102 and/or sole structure 110. This allows components of article of footwear 100 to be interchangeable. For example, upper 102 may be connected to a new sole structure (not shown) which may replace sole structure 110 that becomes damaged. Or, the new sole structure may offer a different comfort or feel.”).
Regarding Claim 9, Ha teaches all of the limitation of the modular shoe system of Claim 8, as discussed in the rejections above. Ha further teaches wherein the sole (2, 4) comprises a midsole (2) removably coupled to an outer sole (4) (fig. 1 shows the midsole (2) being coupled to the outer sole (4), and as both the midsole (2) and the outer sole (4) move relative to one another they are clearly removably coupled to one another; paragraph [0060] teaches “To accommodate the increased length of the insole 2 after the adjustment of a length of the insole 2… the outsole 4 of the sole 1 is provided with the lower tension member 50. Consequently, after the adjustment of a length of the insole 2, the upper and lower tension members 40 and 50 extend by the increased length of the insole 2”).
Regarding Claim 10, Ha teaches all of the limitation of the modular shoe system of Claim 9, as discussed in the rejections above.
Ha does not explicitly teach wherein the sole is configured to removably couple to lateral portions of the one or more movable sections. However, modified Ha is configured to removably couple to the upper along the entire lower perimeter, which includes lateral portions of the moveable sections, therein the sole of modified Ha would clearly be configured to removably couple to lateral portions of the one or more movable sections.
Regarding Claim 11, Ha teaches all of the limitation of the modular shoe system of Claim 8, as discussed in the rejections above. Ha further teaches wherein the midsole (2) is configured to vary in length (paragraph [0059] teaches “A distance between the adjacent teeth of the spur gear 12-1, and the racks 11a and 11b is preferably set such that a total length of the first insole joint part 11 and the second insole joint part 12 is increased in increments of any distance between 1 mm to 1.3 mm at a time, thereby allowing a total length of the insole 2 to be finely adjusted,” therein the midsole (2), which is considered as equivalent to the insole, is clearly configured to vary in length), and wherein the outer sole (4) is configured to vary in length (paragraph [0060] teaches “To accommodate the increased length of the insole 2 after the adjustment of a length of the insole 2… the outsole 4 of the sole 1 is provided with the lower tension member 50. Consequently, after the adjustment of a length of the insole 2, the upper and lower tension members 40 and 50 extend by the increased length of the insole 2”).
Regarding Claim 12, Ha teaches all of the limitation of the modular shoe system of Claim 8, as discussed in the rejections above. Ha further teaches an eyestay (see annotated Fig.) configured to removably couple to at least one of the one or more movable sections (annotated fig. 8 shows an eyestay configured to couple to the movable section (40), Examiner notes that as the eyestay is capable of being removed from the movable section and as such the eyestay is considered to be removably coupled absent further distinguishing limitations).
Regarding Claim 13, Ha teaches all of the limitation of the modular shoe system of Claim 8, as discussed in the rejections above. Ha further teaches an arch bandage (see annotated Fig.) and a heel counter (see annotated Fig.) removably coupled to an arch bandage (annotated fig. 1 shows the heel counter coupled to the arch bandage via the expansion section (40), Examiner notes that as the arch bandage is capable of being removed from the expansion section and heel counter and as such the arch bandage is considered to be removably coupled absent further distinguishing limitations).
Regarding Claim 14, Ha teaches all of the limitation of the modular shoe system of Claim 8, as discussed in the rejections above.
Ha does not teach where the adhesive means comprises one of: flexible slide; interlocking fasteners; a zipper; buttons; clips; hooks; fasteners; snaps; slide seals; strings; or ties.
Attention is drawn to Waatti which teaches an analogous article of footwear. Waatti teaches a shoe (110) comprising: a sole (110); an upper (102) comprising an adhesive means (200) configured to removably couple to the sole (col. 10 ll. 8-12, “In other words, elongated members 200 may be removed from sole structure 110 without destroying, tearing, and/or breaking either upper 102 and/or sole structure 110. This allows components of article of footwear 100 to be interchangeable.”). Waatti further teaches where the adhesive means comprises one of: flexible slide; interlocking fasteners; a zipper; buttons; clips; hooks; fasteners; snaps; slide seals; strings; or ties (fig. 5 shows the adhesive means being hooks).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ha to include the teachings of Waatti such that the adhesive means comprises one of: flexible slide; interlocking fasteners; a zipper; buttons; clips; hooks; fasteners; snaps; slide seals; strings; or ties so as to allow the adhesive means to remain securely fastened until removal is desired (col. 10 ll. 38-47, “Moreover, the protrusions of elongated members 200 (e.g., first protrusion 225 and second protrusion 226) when engaged with notches (e.g., first notch 325 and second notch 326) act to restrict horizontal motion of elongated members 200. In particular, as upper 102 pulls or tugs on elongated members 200 in a direction towards outer peripheral portion 116 of sole structure 110, the protrusions help prevent elongated members 200 from being pulled out of corresponding recesses 300.”).
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10. Claim(s) 16 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Delaney (US 2014/0053433) in view of Deepesh et al. (US 2021/0204637).
Regarding Claim 16, Delaney teaches all of the limitation of the modular shoe system of Claim 15, as discussed in the rejections above.
Delaney does not teach form a sole by removably coupling an outer sole to a midsole.
Attention is drawn to Deepesh et al. which teaches an analogous method of forming an article of footwear. Deepesh et al. teaches a method comprising: wherein forming a modular shoe system comprises forming a modular shoe system; and removably coupling one or more components of the modular shoe system to vary a size, shape, appearance, or purposed of the modular shoe system (paragraph [0064] teaches “the user may change the upper 102, midsole 104, and outsole 106 for comfort. The user may change the upper 102, midsole 104, and outsole 106 for style or look; i.e. to switch from a casual to a more formal look. The user may choose to insert the midsole 104 having more or less arch support, shock absorption, and/or cushioning based on personal preference,” therein clearly a modular shoe system of removably coupled components is formed). Deepesh et al. further teaches form a sole by removably coupling an outer sole to a midsole (paragraph [0069] teaches “The midsole 104 and the outsole 106 each include correspondingly arranged first magnetic elements 208a-208c, the second magnetic elements 210a-210c adapted to be attractive one another such that placement of the midsole 104 proximate to the outsole 106 draws the bottom part 206 into abutment with the top part 202,” therein the sole is clearly formed by coupling an outer and a midsole).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Delaney to include the teachings of Deepesh et al. such that the method includes forming a sole by removably coupling an outer sole to a midsole so as to allow the outsole to interchanged for different uses (paragraph [0062] “the outsole 106 may comprise different fixtures for various purposes, such as cleats and/or spikes for grip. In particular, tread may be formed on the outsole 106 in patterns to maximize gripping or traction”)
Regarding Claim 17, Delaney teaches all of the limitation of the modular shoe system of Claim 16, as discussed in the rejections above. Delaney further teaches wherein forming a modular shoe system further comprises forming one or more vias (7, 8) in the sole to receive and couple to an end of at least one expansion section (20) (fig. 5 shows the via (7, 8) receiving and coupling to an end of the expansion section at structure (18), the expansion section (20) expanding the upper).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection necessitated by amendment. Therefore, see aforementioned rejections for the argued missing limitations.
Regarding Claims 1 and 8, Applicant submits that Ha does not teach one or more telescoping expansion sections. Examiner disagrees, and submits that Ha does teach one telescoping section, as the telescoping section is an elastic section. Examiner notes that as only one section can be considered telescoping, telescoping is interpreted to mean “to make more compact or concise; condense” (Verb Defn. No. 2 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com). Because the telescoping section of Ha expands and retracts, it is considered as meeting this limitation. Examiner respectfully suggests further defining the structure of the expansion section. For at least these reasons, the 35 U.S.C. 102 and 35 U.S.C. 103 rejections of Claim 1 and Claim 8, respectively, are maintained.
Regarding Claim 15, Applicant submits that Delaney does not teach one or more telescoping expansion sections. Examiner disagrees, and similarly to above submits that Delaney does teach one telescoping section, as the telescoping section is capable of being compacted through physical manipulation. Examiner notes that as only one section can be considered telescoping, telescoping is interpreted to mean “to make more compact or concise; condense” (Verb Defn. No. 2 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com). Because the telescoping section of Delaney is capable of being compacted, it is considered as meeting this limitation. Examiner respectfully suggests further defining the structure of the expansion section. For at least these reasons, the 35 U.S.C. 102 rejection of Claim 15 is maintained.
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 HALEY A SMITH whose telephone number is (571)272-6597. The examiner can normally be reached Monday - Thursday 7:00 am - 5:00 pm.
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/HALEY A SMITH/Primary Examiner, Art Unit 3732