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 .
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 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.
DETAILED ACTION
This is in response to the claims filed January 21, 2026, in which claims 1-13 and 15-20 were presented for examination, of which claims 1, 12 and 15 were amended and claim 14 was cancelled, are 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 21, 2026 has been entered.
Response to Arguments
Applicant’s arguments, see Remarks, filed January 21, 2026, with respect to the rejection(s) of claim(s) 1-3, 7-11 and 14-17 under 35 U.S.C. 102 and claim(s) 4-6, 12-13, and 18-20 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of McClelland (US Patent 6,226,895).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 7-11 and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McClelland (US Patent 6,226,895).
Regarding claim 1, McClelland discloses an article of footwear (invention as shown in Fig. 1-4), comprising:
an upper (12, Fig. 3) having a bottom portion (26) that includes a lower perimeter edge of the upper (see annotated Fig. 3 and 4 below);
a closed transition strip of unitary construction (16) that has an outer perimeter edge (see annotated Fig. 4 below), an inner perimeter edge (see annotated Fig. 4 below), and a width (see annotated Fig. 4 below) between the outer perimeter edge and the inner perimeter edge, the inner perimeter edge defining an internal opening of the transition strip (see annotated Fig. 3 below), the transition strip (16) extending along the entire lower perimeter edge of the upper bottom portion of the upper from a forefoot region of the upper to a heel region of the upper (see annotated Fig. 3 below);
a sole structure (20) with an upper surface (see annotated Fig. 3 below) and a ground-contacting surface (52) opposite the upper surface (as shown in annotated Fig. 3 below), the upper surface of the sole structure having a perimeter portion (perimeter of 56) that extends along a perimeter of the upper surface (see annotated Fig. 3 below) and an internal portion (portion of 50) that is surrounded by the perimeter portion (56, as shown in Fig. 3);
wherein the transition strip (16) is secured to the bottom portion of the upper along the lower perimeter edge (as shown in annotated Fig. 4 below), the lower perimeter edge of the upper (see annotated Fig. 4 below) and the transition strip (16) are secured to the perimeter portion of the upper surface of the sole structure (as shown in annotated Fig. 3 and 4 below) with the inner perimeter edge of the transition strip defining an inner boundary of the perimeter portion (see annotated Fig. 4 below, examiner notes the boundary is between inner surface of sole, 54, and the annotated “inner perimeter edge”), and the internal portion of the upper surface of the sole structure (50) is exposed by the internal opening of the transition strip (see annotated Fig. 4 below, examiner notes “exposed” due to internal opening of transition strip being aligned with the opening of the sole, 22).
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Fig. 3-Examiner Annotated
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Fig. 4-Examiner Annotated
Regarding claim 2, McClelland discloses wherein the width of the transition strip (see annotated Fig. 4 above) is substantially constant along a length of the transition strip (as shown in Fig. 3-4 and 6).
Regarding claim 3, McClelland discloses the width of the transition strip varies along a length of the transition strip (examiner notes in Fig. 3 it is shown that transition strip, 16, width varies where the arrow of 16 is pointing and at the arrows where elements 32 and 38 are pointing, compared to the rest of the transitioning strip along its length).
Regarding claim 7, McClelland discloses wherein the transition strip (16) comprises stitch holes (holes formed from 40) adjacent the inner perimeter edge (see annotated Fig. 4) from a removable stitch (40, examiner notes one of ordinary skill in the art would recognize stitch, 40, is capable of being removable through at least one mechanical means, such as cutting).
Regarding claim 8, McClelland discloses wherein the transition strip (16) is a generally non-stretchable material (Col. 1, lines: 15-21).
Regarding claim 9, McClelland discloses wherein the transition strip (16) is secured to the bottom portion of the upper (26) by stitching the bottom portion of the upper to an area adjacent the outer perimeter edge of the transition strip (examiner notes as shown by stitches, 40, in annotated Fig. 4 above).
Regarding claim 10, McClelland discloses the lower perimeter edge of the upper (see annotated Fig. 4 above) and the transition strip (16) are secured to the perimeter portion of the upper surface of the sole structure (see annotated Fig. 4 above) by a bonding material (40).
Regarding claim 11, McClelland discloses further comprising a sockliner (18, Fig. 3 and 4), a bottom surface of the sockliner (see annotated Fig. 4 above) being in contact with at least a portion of an upper surface of the transition strip (examiner notes “in contact with a portion of the upper surface of the transition strip” through their contact of the upper) and the exposed internal portion of the upper surface of the sole structure (portion of 50, examiner notes sockliner, 18, is in contact with the sole, 20, through element 22).
Regarding claim 15, McClelland discloses an article of footwear (invention as shown in Fig. 1-4), comprising:
an upper (12, Fig. 3) having a bottom portion (26) that includes a lower perimeter edge of the upper (see annotated Fig. 3 and 4 above);
a transition strip (16) that is a closed strip of material of unitary construction (as shown in Fig. 3-4) with an outer perimeter edge, an inner perimeter edge, and a width between the outer perimeter edge and the inner perimeter edge (see annotated Fig. 4 above), the inner perimeter edge defining an internal opening of the transition strip (see annotated Fig. 3 above), the transition strip (16) extending along the entire lower perimeter edge of the upper bottom portion of the upper from a forefoot region of the upper to a heel region of the upper (see annotated Fig. 3 above); and
a sole structure (20) with an upper surface (see annotated Fig. 3 above) and a ground-contacting surface (52) opposite the upper surface (as shown in annotated Fig. 3 above), the upper surface of the sole structure having a perimeter portion (perimeter of 56) that extends along a perimeter of the upper surface (see annotated Fig. 3 above) and an internal portion (portion of 50) that is surrounded by the perimeter portion (56, as shown in Fig. 3),
wherein the outer perimeter edge of the transition strip is secured to the bottom portion of the upper (as shown in annotated Fig. 4 above) and extends along the entire lower perimeter edge (as shown in Fig. 1-3 and in annotated Fig. 4 above), the lower perimeter edge of the upper (see annotated Fig. 4 above) and the transition strip (16) are secured to the perimeter portion of the upper surface of the sole structure (as shown in annotated Fig. 3 and 4 above) with the inner perimeter edge of the transition strip defining an inner boundary of the perimeter portion (see annotated Fig. 4 above, examiner notes the boundary is between inner surface of sole, 54, and the annotated “inner perimeter edge”), and the internal portion of the upper surface of the sole structure (50) is exposed by the internal opening of the transition strip (see annotated Fig. 4 above, examiner notes “exposed” due to internal opening of transition strip being aligned with the opening of the sole, 22),
wherein the transition strip (16) is secured to the bottom portion of the upper (26) by stitching the bottom portion of the upper to an area adjacent the outer perimeter edge of the transition strip (examiner notes as shown by stitches, 40, in annotated Fig. 4 above), and
wherein the lower perimeter edge of the upper (see annotated Fig. 4 above) and the transition strip (16) are secured to the perimeter portion of the upper surface of the sole structure (see annotated Fig. 4 above) by a bonding material (40).
Regarding claim 16, McClelland discloses wherein the width of the transition strip (see annotated Fig. 4 above) is substantially constant along a length of the transition strip (as shown in Fig. 3-4 and 6).
Regarding claim 17, McClelland discloses the width of the transition strip varies along a length of the transition strip (examiner notes in Fig. 3 it is shown that transition strip, 16, width varies where the arrow of 16 is pointing and at the arrows where elements 32 and 38 are pointing, compared to the rest of the transitioning strip along its length).
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.
Claims 4-6, 12, 13 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over McClelland.
Regarding claim 4, McClelland discloses the invention substantially as claimed above.
McClelland does not explicitly disclose the width of the transition strip is between 6 mm and 15 mm.
However, it would have been obvious to one having ordinary skill in the art at the
time the invention to experiment with the width of the transition strip is between 6 mm and 15 mm, in order to provide a footwear with various sole sizes, since discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Please note that in the instant application, applicant has not disclosed any criticality for the claimed limitations.
Regarding claim 5, McClelland discloses the invention substantially as claimed above.
McClelland does not explicitly disclose the width of the transition strip is between 8 and 13 mm.
However, it would have been obvious to one having ordinary skill in the art at the
time the invention to experiment with the width of the transition strip is between 8 and 13 mm, in order to provide a footwear with various sole sizes, since discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Please note that in the instant application, applicant has not disclosed any criticality for the claimed limitations.
Regarding claim 6, McClelland discloses the invention substantially as claimed above.
McClelland does not explicitly disclose the width of the transition strip is between 10.5 and 12 mm.
However, it would have been obvious to one having ordinary skill in the art at the
time the invention to experiment with the width of the transition strip is between 10.5 and 12 mm, in order to provide a footwear with various sole sizes, since discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Please note that in the instant application, applicant has not disclosed any criticality for the claimed limitations.
Regarding claim 12, McClelland discloses the transition strip has a first thickness and a portion of the upper immediately adjacent to the transition strip has a second thickness (examiner notes the thickness for the strip and the upper are shown in Fig. 4).
McClelland does not explicitly disclose a ratio of the first thickness to the second thickness is equal or less than 0.7.
However, it would have been obvious to one having ordinary skill in the art at the
time the invention to experiment with the ratio of the first thickness to the second thickness is equal or less than 0.7, in order to provide a footwear with various sole sizes, since discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Please note that in the instant application, applicant has not disclosed any criticality for the claimed limitations.
Regarding claim 13, McClelland discloses the transition strip has a first thickness and a portion of the upper immediately adjacent to the transition strip has a second thickness (examiner notes the thickness for the strip and the upper are shown in Fig. 4).
McClelland does not explicitly disclose a ratio of the first thickness to the second thickness is between 0.3 and 0.6.
However, it would have been obvious to one having ordinary skill in the art at the
time the invention to experiment with the ratio of the first thickness to the second thickness is between 0.3 and 0.6., in order to provide a footwear with various sole sizes, since discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Please note that in the instant application, applicant has not disclosed any criticality for the claimed limitations.
Regarding claim 18, McClelland discloses the invention substantially as claimed above.
McClelland does not explicitly disclose the width of the transition strip is between 6 mm and 15 mm.
However, it would have been obvious to one having ordinary skill in the art at the
time the invention to experiment with the width of the transition strip is between 6 mm and 15 mm, in order to provide a footwear with various sole sizes, since discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Please note that in the instant application, applicant has not disclosed any criticality for the claimed limitations.
Regarding claim 19, McClelland discloses the invention substantially as claimed above.
McClelland does not explicitly disclose the width of the transition strip is between 8 and 13 mm.
However, it would have been obvious to one having ordinary skill in the art at the
time the invention to experiment with the width of the transition strip is between 8 and 13 mm, in order to provide a footwear with various sole sizes, since discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Please note that in the instant application, applicant has not disclosed any criticality for the claimed limitations.
Regarding claim 20, McClelland discloses the invention substantially as claimed above.
McClelland does not explicitly disclose the width of the transition strip is between 10.5 and 12 mm.
However, it would have been obvious to one having ordinary skill in the art at the
time the invention to experiment with the width of the transition strip is between 10.5 and 12 mm, in order to provide a footwear with various sole sizes, since discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Please note that in the instant application, applicant has not disclosed any criticality for the claimed limitations.
Conclusion
The prior art made of record and not relied upon is considered pertinent (See
PTO-892) to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAKOTA MARIN whose telephone number is (571)272-3529. The examiner can normally be reached Mon.-Fri., 9:00AM-6:00PM.
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/DAKOTA MARIN/Examiner, Art Unit 3732
/ALISSA J TOMPKINS/Supervisory Patent Examiner, Art Unit 3732