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 .
This is in response to Applicant’s amendment in which claims 1 and 14-16 have been amended, claims 13 has been canceled, and claims 1, 3-12, and 14-17 remain pending.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The specification fails to provide antecedent basis for the cover substantially filling an entirety of the receiving area (see claim 1).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-12, and 14-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, there is no support in the specification for the cover substantially filling an entirety of the receiving area. The written description is silent regarding the cover filling the receiving area, and the drawings do not show the cover substantially filling an entirety of the receiving area. As seen in Fig. 4, there is a substantial space below the bottom surface of the cover which houses the cleat-nut 50, and therefore the cover does not substantially fill an entirety of the receiving area.
Claims 3-12 and 14-17 depend from rejected claim 1.
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, 3-12, and 14-17 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.
Claim 1 recites the limitation “the cover being a separate member from the cleat-nut” in line 6. However, claim 1 previously recites “a receiving area so as to receive a cleat-nut” in line 3. It is not clear if the cleat-nut is being positively recited. The limitation of line 3 does not positively recite the cleat-nut, but the limitation of line 6 positively recites a relationship between the cover and the cleat-nut. The claim should be amended to either clearly positively recite the cleat-nut in line 3, or to remove the positive relationship between the cover and the cleat-nut in line 6. For purposes of examination, it appears that the cleat-nut is not positively recited.
Claim 1 recites the limitation “the cover … substantially filling an entirety of the receiving area” in lines 6-7. However, claim 1 previously recites “a receiving area so as to receive a cleat-nut” in line 3. It is not clear how the cover can substantially fill an entirety of the receiving area, while the receiving area also is configured to receive a cleat-nut. For purposes of examination it appears that the cover fills a substantial portion of the receiving area, but not the full entirety of the receiving area.
The term “substantially” in claim 1, line 6 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear how an object can substantially fill an entirety of something, as the term ‘substantially’ appears to contradict the term ‘entirety.’ For purposes of examination it appears that the cover fills a substantial portion of the receiving area, but not the full entirety of the receiving area.
Claims 3-12 and 14-17 depend from rejected claim 1.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3, 4, 6-8, 14, 16, and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okajima et al. (US 5,205,056).
Regarding claim 1, Okajima discloses a shoe sole comprising: a body (6) extending in a longitudinal direction between a toe end and a heel end, a top surface of the body including a receiving area (13) so as to receive a cleat-nut (10) provided in between the toe end and the heel end; and a cover (9) configured to cover the receiving area in a state where the cover is coupled to the body, the cover being a separate member from the cleat-nut (wherein elements 9 and 10 are distinct members) and substantially filling an entirety of the receiving area (wherein the cover fills at least half the receiving area; Fig. 5-6); wherein the receiving area includes a body engagement part (protrusion, see annotated Fig. 3 below), and the cover includes a cover engagement part (notch, see annotated Fig. 3 below) configured to be detachably engaged with the body engagement part (Fig. 5, 6), the body engagement part being configured to receive the cover engagement part to secure the cover to the body such that disengaging the cover engagement part from the body engagement part removes the cover from the body and provides access to the cleat-nut disposed in the receiving area, the top surface includes a recess (13) defining the receiving area, an attachment opening (200) extends from a bottom surface of the body to the receiving area to provide access to the cleat-nut in a state in which the cleat-nut is disposed in the receiving area, and the top surface of the body is a foot-facing surface and the bottom surface of the body is a non-foot facing surface (column 2, lines 21-55; Fig. 1-3).
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Regarding claim 3, Okajima discloses that the cover is disposed below or even with the top surface of the body in a state where the cover is coupled to the body (Fig. 2).
Regarding claim 4, Okajima discloses that the body engagement part is disposed on a wall defining the receiving area, and the cover engagement part is disposed on a side surface of the cover (Fig. 3).
Regarding claim 6, Okajima discloses that the cover engagement part includes a notch, and the body engagement part includes a protrusion configured to engage the notch to detachably retain the cover to the body (Fig. 3).
Regarding claim 7, Okajima discloses that the body engagement part includes a first body engagement part and a second body engagement part, the first body engagement part and the second body engagement part are disposed so as to face each other in a width direction of the body, and the cover engagement part includes a first cover engagement part configured to engage the first body engagement part and a second cover engagement part configured to engage the second body engagement part (Fig. 3).
Regarding claim 8, Okajima discloses that the first body engagement part includes one of a first notch and a first protrusion, while the first cover engagement part includes the other of the first notch and the first protrusion such that the first protrusion is configured to be detachably engaged with the first notch, and the second body engagement part includes one of a second notch and a second protrusion, while the second cover engagement part includes the other of the second notch and the second protrusion such that the second protrusion is configured to be detachably engaged with the second notch (Fig. 3).
Regarding claim 14, Okajima discloses that the attachment opening includes at least one elongated slot that is elongated in the longitudinal direction (Fig. 3).
Regarding claim 16, Okajima discloses a shoe comprising: the shoe sole according to claim 1; an upper (102) attached to the shoe sole; and an inner sole layer (7) at least partly overlying the top surface of the body and disposed inside the upper (Fig. 1-3).
Regarding claim 17, Okajima discloses an outer sole layer (5) at least partly overlying a bottom surface of the body and disposed outside the upper (Fig. 1-3).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okajima, as applied to claim 1.
Regarding claim 5, Okajima does not disclose that the body engagement part includes a notch and cover engagement part includes a protrusion. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to reverse the notch and protrusion on the cover and body of Okajima, as this would be a reversal of the essential working parts. It has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167.
Claim(s) 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okajima, as applied to claim 1, in view of Aveni et al. (US 2008/0016720), herein Aveni.
Regarding claims 9-12, Okajima does not disclose the specific material of the body or cover. Aveni teaches that a rigid element in a shoe sole may be formed of a resin material having a polyamide (such as Pebax®) or a fiber reinforced plastic material (paragraph 0037). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the cover of a resin material or a fiber reinforced plastic material (such as carbon or glass fibers) in order to use a material well known for use in shoe soles which is rigid, strong, and lightweight. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okajima, as applied to claims 1 and 13, in view of Wu et al. (US 2016/0366973), herein Wu.
Regarding claim 15, Okajima does not disclose three elongated slots. Wu teaches a shoe sole having an attachment opening in the form of three elongated slots (11; Fig. 3). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide an attachment opening in the form of three elongated slots, as taught by Wu, as this would be a simple substitution of one type of bicycle cleat attachment for another, with the predictable result of providing a secure attachment between the cleat and the sole.
Response to Arguments
Applicant's arguments filed 12/01/2025 have been fully considered but they are not persuasive.
Applicant argues that the plate 9 of Okajima is not a separate member from the guide elements 10. However, inasmuch as Applicant has defined “separate member” in the claims, elements 9 and 10 are distinct members with distinct and nonoverlapping structures, and therefore are separate members. It is further noted that the cleat-nut does not appear to be positively recited within the claims, and the structure of Okajima is capable of receiving a separate (and non-attached) cleat-nut within the receiving area.
Applicant further argues that removing the plate 9 from the midsole 6 does not provide access to the guide elements 10 disposed in the recess 13, as when the plate 9 is removed from the recess 13, the guide elements are removed with the plate 9. However, removing the plate 9 does provide access to the guide elements 10, as the plate may be flipped over with the guide elements exposed. It is further noted that the cleat-nut does not appear to be positively recited within the claims, and the structure of Okajima is capable of receiving a separate cleat-nut within the receiving area which is accessed in the receiving area with the cover removed.
Applicant argues that the plate 9 does not substantially fill an entirety of the recess 13, as the plate 9 is movable within the recess. However, inasmuch as Applicant has defined “substantially filling an entirety” within the claims, the plate 9 does substantially fill an entirety of the recess. As seen in Fig. 5 and 6, the cover fills at least half the receiving area, which is a substantial portion of the recess.
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 SHARON M PRANGE whose telephone number is (571)270-5280. The examiner can normally be reached M-F 8:30-5 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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/SHARON M PRANGE/ Primary Examiner, Art Unit 3732