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 with the written response received on March 26, 2026 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amendment, claims 1 and 26 have been amended; claims 2-4, 12-14, 17-20 and 27 are canceled; claims 7-11, 15 and 16 are withdrawn from further consideration. Accordingly, claims 1, 5-11, 15, 16 and 21-26 are pending in this application, with an action on the merits to follow regarding claims 1, 5, 6 and 21-26.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 5: “side” should be added after “a lateral”
Appropriate correction is required.
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 23-26 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 oriented in a transverse configuration from a lateral [side] to a medial side (absent any definition with respect to the boundaries of the medial side and lateral side, a medial half of the sole can be considered a medial side and a lateral half of the sole can be considered a lateral side; since the apertures are three-dimensional, they are oriented in all directions, including a transverse direction 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).
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 that the first aperture and the second aperture are configured to expand the sole structure in one direction when selectively expanded (the apertures’ expansion includes one direction, as well as additional directions; Examiner notes that the claims are open-ended with “comprising” used as the transitional phrase in independent claim 1, allowing for additional structure/functionality to be present).
Claims 5 and 22 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.
Response to Arguments
Applicant's arguments filed March 26, 2026 have been fully considered but they are not persuasive.
Applicant argues that Cross-439 and Cross-178 do not show “that the at least two apertures [are] oriented in a transverse configuration from a lateral to a medial side”, and that these references “instead relate to auxetic structures that require features that extend in directions that are not transverse from a lateral to a medial side”. This is not found persuasive because even if the auxetic apertures extend in additional directions, one of the directions includes a transverse direction, because the apertures are three-dimensional in shape and volume. Also, collectively, the plurality of apertures is arranged throughout the outsole’s body, including along a transverse direction of the sole’s surfaces. Accordingly, the prior art is still deemed to meet the limitations of the claims, and the 35 U.S.C. 103 rejections are maintained. Examiner notes that claim 26’s amendment broadened the scope of the claim, resulting in a new ground of rejection, as explained above in the 35 U.S.C. 103 section.
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.
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/JAMESON D COLLIER/ Primary Examiner, Art Unit 3732
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