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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 15, 2025 has been entered.
Response to Amendment
The amendments filed with the written response received on October 14, 2025 (directed to be entered with the RCE filed on December 15, 2025) have been considered and an action on the merits follows. As directed by the amendment, claims 1 and 26 have been amended; claims 2-4, 12-14 and 17-20 are canceled; claims 7-11, 15 and 16 are withdrawn from further consideration; and claim 27 has been added. Accordingly, claims 1, 5-11, 15, 16 and 21-27 are pending in this application, with an action on the merits to follow regarding claims 1, 5, 6 and 21-27.
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: claim 26 has been amended to recite “wherein the first aperture and the second aperture are triangular pyramidal shaped volume apertures when selectively expanded”, and new claim 27 recites “wherein the first aperture and the second aperture are parallelogram pyramid shaped volume apertures when selectively expanded” (emphasis added). The terms “triangular pyramidal shaped” and “parallelogram pyramid shape” are not recited anywhere in the written Specification, although support appears to be present at least in Figs. 2I and 2J.
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, 6, 21 and 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Cross et al. (hereinafter “Cross-439”) (USPN 9,402,439) in view of Cross et al. (hereinafter “Cross-178”) (US 2017/0258178).
Regarding independent claim 1, Cross-439 discloses a sole structure (outsole #401 in Figs. 19-25) for adjustable footwear (the outsole #401 is capable of being used in an adjustable footwear; Examiner notes the phrase “for adjustable footwear” does not further structurally define the claimed sole structure in any patentably-distinguishing sense), the sole structure comprising: a top surface; a bottom surface opposite the top surface (Fig. 20 shows a thickness section view of the outsole #401, which has a top and bottom surface; the top surface is facing midsole #402 and the bottom surface faces away from midsole #402); and at least two apertures (apertures #421, labeled in Fig. 21) configured to facilitate adjustability of at least one of a size and a shape of the sole structure (Fig. 23 shows a progression (left-to-right) from an initially closed aperture configuration to an expanded aperture configuration, wherein the size and shape of the sole structure stretches in the expanded aperture position as compared to the initially closed aperture configuration), the at least two apertures comprising: a first aperture (any one of the apertures #421 is a first aperture); and a second aperture (any other one of the apertures is a second aperture); wherein the at least two apertures are predisposed in a closed position such that adjustability is achieved by selectively expanding the at least two apertures (Col. 11, Lines 52-59 describe how tension causes the apertures to be opened, and absence of tension causes the apertures to be closed). Cross-439 suggests that the apertures may exist as blind holes on either the top or bottom of the sole (Col. 9, Lines 40-47 of Cross-439), but does not explicitly state that the apertures are blind holes that extend some from the top surface and some from the bottom surface to extend partially through the sole, and it cannot be determined from Cross-439 alone whether this limitation is met.
Cross-178 teaches a similar shoe sole structure with apertures that are adapted to expand and/or contract when a force is applied. Cross-178 teaches that the sole can have blind hole apertures that extend into the sole from both the top and bottom surfaces (¶ 0063 of Cross-178 discloses that both the top and bottom surfaces (#150 and #152) can have blind holes formed therein, wherein the holes are cut into the surface and terminate within the midsole thickness; “the holes may be formed in or may be visible from inner surface 150 or a combination of holes formed in or visible from either inner surface 150 or outer surface 152”; ¶ 0063 of Cross-178, second to last sentence).
Cross-439 and Cross-178 teach analogous inventions in the field of shoe soles with apertures that promote expansion/flexion under an applied force (i.e. auxetic structures). 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 included several instances of the initially-closed apertures #421 in both the top and bottom surfaces of outsole #401 of Cross-439 (as taught by Cross-178) in order to further improve the flexibility of the sole in both plantarflexion and dorsiflexion circumstances, as is a well-known concept in the art. As a result of the modification, both the first aperture and the second aperture would extend from the top and bottom surface of the sole structure, respectively, and only partially through the sole structure.
Regarding claim 6, the modified sole structure of Cross-439 (i.e. Cross-439 in view of Cross-178, as applied to claim 1 above) renders obvious that the at least two apertures are configured to accommodate adjustment in both width and length of the sole structure (Abstract of Cross-439 describes the sole structure being expandable in both the direction under tension and the orthogonal direction to the direction under tension (i.e. both a width and a length adjustment can occur)).
Regarding claim 21, the modified sole structure of Cross-439 (i.e. Cross-439 in view of Cross-178, as applied to claim 1 above) renders obvious that the first aperture and the second aperture are longitudinally offset relative to each other (see Figs. 19 and 22 of Cross-439, there are several examples of two apertures (i.e. first and second apertures) that are longitudinally offset relative to one another).
Regarding claim 23, the modified sole structure of Cross-439 (i.e. Cross-439 in view of Cross-178, as applied to claim 1 above) renders obvious that the at least two apertures is at least four apertures (see Figs. 19 and 22, there are many more than 4 apertures), the at least four apertures further comprising: a third aperture extending from the top surface and only partially through the sole structure; and a fourth aperture extending from the bottom surface and only partially through the sole structure (as taught by Cross-178 and incorporated into Cross-439 in the modification to address claim 1 above, several instances of blind holes are present in both the top and bottom surfaces of the outsole #401, which would include a third aperture being in the top surface and a fourth aperture being in the bottom surface).
Regarding claim 24, the modified sole structure of Cross-439 (i.e. Cross-439 in view of Cross-178, as applied to claims 1 and 23 above) renders obvious that the first aperture, the second aperture, the third aperture, and the fourth aperture are longitudinally offset relative to each other (see Fig. 22, there are many apertures that are offset relative to one another in all planar directions, which would include a longitudinal direction).
Regarding claim 25, the modified sole structure of Cross-439 (i.e. Cross-439 in view of Cross-178, as applied to claims 1 and 23 above) renders obvious that the first aperture and the second aperture are transversely offset relative to each other, and the third aperture and the fourth aperture are transversely offset relative to each other (see Fig. 22, there are many apertures that are offset relative to one another in all planar directions, which would include transversely offset positions).
Claims 5, 22, 26 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Cross-439 in view of Cross-178 as applied to claim 1 (and claim 21, regarding claim 22) above, and further in view of Lumbard (USPN 2,556,364).
Regarding claim 5, the modified sole structure of Cross-439 (i.e. Cross-439 in view of Cross-178, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above. Cross-439 teaches that the at least two apertures are oriented in an offset pattern, but is silent to the apertures being “channels” (Examiner notes that, while the claim does not further define “channels” to be any particular shape, length-relative-to-width, etc., in the interest of compact prosecution, “channels” is being interpreted to be in the same context as the aperture shapes shown in elected Fig. 2J in Applicant’s Drawings). Cross-439 does teach, however, that the auxetic shapes of the blind holes may differ from the illustrated triangular-star-shaped geometry, and can be any of a variety of polygonal and/or curved geometries (Col. 6, Lines 13-42 of Cross-439).
Lumbard teaches a sole structure that is flexible and includes holes (slashes #14) that are in the form of channels (similar to the “channels” shown in Applicant’s elected Fig. 2J; see Figs. 2 and 3 of Lumbard).
Modified Cross-439 and Lumbard teach analogous inventions in the field of flexible soles. 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 used the transversely-aligned slit shapes of Lumbard as the shape of choice for the blind holes in the outsole of modified Cross-439 in order to provide an alternative known shape that can expand upon application of a force in order to permit the sole to adjust depending on the foot anatomy of the wearer, and further since it has been held that modifying the shape of an element would be obvious absent evidence that the particular shape of the element of the claimed invention was significant. See MPEP 2144.04(IV)(B). As a result of the modification, the blind holes (i.e. apertures) would be channels, in the same way Applicant’s apertures in Fig. 2J are channels.
Regarding claim 22, the modified sole structure of Cross-439 (i.e. Cross-439 in view of Cross-178, as applied to claims 1 and 21 above) renders obvious all the limitations of claims 1 and 21, as set forth above, but is silent to the first aperture and the second aperture being transversely elongated. Cross-439 does teach, however, that the auxetic shapes of the blind holes may differ from the illustrated triangular-star-shaped geometry, and can be any of a variety of polygonal and/or curved geometries (Col. 6, Lines 13-42 of Cross-439).
As noted above, Lumbard teaches a sole structure that is flexible and includes holes (slashes #14) that are in the form of channels (similar to the “channels” shown in Applicant’s elected Fig. 2J).
As noted above, modified Cross-439 and Lumbard teach analogous inventions in the field of flexible soles. 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 used the transversely-aligned slit shapes of Lumbard as the shape of choice for the blind holes in the outsole of Cross-439 in order to provide an alternative known shape that can expand upon application of a force in order to permit the sole to adjust depending on the foot anatomy of the wearer, and further since it has been held that modifying the shape of an element would be obvious absent evidence that the particular shape of the element of the claimed invention was significant. See MPEP 2144.04(IV)(B). As a result of the modification, the blind holes (i.e. apertures) would be transversely elongated, in the same way Applicant’s apertures in Fig. 2J are transversely elongated.
Regarding claim 26, the modified sole structure of Cross-439 (i.e. Cross-439 in view of Cross-178, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, but is silent to the first aperture and the second aperture are triangular pyramidal shaped volume apertures when selectively expanded. Cross-439 does teach, however, that the auxetic shapes of the blind holes may differ from the illustrated triangular-star-shaped geometry, and can be any of a variety of polygonal and/or curved geometries (Col. 6, Lines 13-42 of Cross-439).
As noted above, Lumbard teaches a sole structure that is flexible and includes holes (slashes #14) that are in the form of channels (similar to the “channels” shown in Applicant’s elected Fig. 2J).
As noted above, modified Cross-439 and Lumbard teach analogous inventions in the field of flexible soles. 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 used the transversely-aligned slit shapes of Lumbard as the shape of choice for the blind holes in the outsole of Cross-439 in order to provide an alternative known shape that can expand upon application of a force in order to permit the sole to adjust depending on the foot anatomy of the wearer, and further since it has been held that modifying the shape of an element would be obvious absent evidence that the particular shape of the element of the claimed invention was significant. See MPEP 2144.04(IV)(B). As a result of the modification, the blind holes (i.e. apertures) at least at the side edges of the outsole, would have triangular pyramidal shaped volumes when expanded, in the same way Applicant’s apertures in Fig. 2J have triangular pyramidal shaped volumes when expanded.
Regarding claim 27, the modified sole structure of Cross-439 (i.e. Cross-439 in view of Cross-178, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, but is silent to the first aperture and the second aperture are parallelogram pyramid shaped volume apertures when selectively expanded. Cross-439 does teach, however, that the auxetic shapes of the blind holes may differ from the illustrated triangular-star-shaped geometry, and can be any of a variety of polygonal and/or curved geometries (Col. 6, Lines 13-42 of Cross-439).
As noted above, Lumbard teaches a sole structure that is flexible and includes holes (slashes #14) that are in the form of channels (similar to the “channels” shown in Applicant’s elected Fig. 2J).
As noted above, modified Cross-439 and Lumbard teach analogous inventions in the field of flexible soles. 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 used the transversely-aligned slit shapes of Lumbard as the shape of choice for the blind holes in the outsole of Cross-439 in order to provide an alternative known shape that can expand upon application of a force in order to permit the sole to adjust depending on the foot anatomy of the wearer, and further since it has been held that modifying the shape of an element would be obvious absent evidence that the particular shape of the element of the claimed invention was significant. See MPEP 2144.04(IV)(B). As a result of the modification, the blind holes (i.e. apertures) in the inward, middle region of the outsole, would have parallelogram pyramid shaped volumes when expanded, in the same way Applicant’s apertures in Fig. 2J have parallelogram pyramid shaped volumes when expanded.
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. Any arguments deemed relevant to the new ground(s) of rejection will be addressed below.
On page 9 of Applicant’s Remarks, Applicant states that Lumbard opposes using at least two apertures predisposed in a closed position as recited in claim 1. Examiner notes that Lumbard was not previously (nor is currently) being relied upon as a primary reference to be modified. Lumbard is relied upon for teaching the known shape of the apertures in a sole structure, and the 35 U.S.C. 103 rejection above applies that known shape to the Cross-439 sole structure as a shape of choice for the initially-closed apertures, as explained above.
Conclusion
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/JAMESON D COLLIER/ Primary Examiner, Art Unit 3732