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 .
DETAILED ACTION
Response to Amendment
Applicant’s amendment filed March 19, 2026 has been received, Claims 1-10 and 13-24 are currently pending.
Claim Objections
1. Claim 22 is objected to because of the following informalities: Claim 22 recites “the tow area” which appears to be a typographical error and should read “the toe area”. 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
2. Claim(s) 1-10 and 13-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Giese (US 4,316,332) in view of Gross (US 4,316,335), and in further view of Guyan (US 2014/0259787).
Regarding Claim 1, Giese discloses an outsole for a shoe, the outsole (as seen in Fig.1) comprising: a cushion element (14/23) being arranged in a forefoot area of the outsole (as seen in Fig.1-3), wherein the cushion element comprises a first portion and a second portion (see annotated Figure below), and a sole element (3,4,5,6/20) comprising a receiving portion (12/21) configured to receive the cushion element (as seen in Fig.1-3).
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Giese dose not disclose wherein a thickness of the cushion element measured in a direction perpendicular to a surface on which the outsole is to be placed when worn by a wearer reaches a maximum thickness across a maximum thickness portion of an area configured to support Metatarsal fat pads of the wearer and wherein the thickness of the cushion element decreases along a first slope from the maximum thickness portion towards a heel area of the outsole and the thickness of the cushion element decreases along a second slope from the maximum thickness portion towards a toe area of the outsole; and wherein at least one of the first slope and the second slope extend a first distance along a longitudinal direction of the outsole, and the maximum thickness portion extends a second distance along the longitudinal direction less than the first distance. However, Gross teaches an outsole (70) with a cushion element (toe region of 75)(as seen in Fig.7 & 8); wherein a thickness of the cushion element (i.e. height of toe region of 75) measured in a direction perpendicular to a surface on which the outsole is to be placed when worn by a wearer reaches a maximum thickness across a maximum thickness portion of an area configured to support Metatarsal fat pads of the wearer and wherein the thickness of the cushion element decreases along a first slope from the maximum thickness portion towards a heel area of the outsole and the thickness of the cushion element decreases along a second slope from the maximum thickness portion towards a toe area of the outsole (as seen in Fig.9); and wherein at least one of the first slope and the second slope extend a first distance along a longitudinal direction of the outsole, and the maximum thickness portion extends a second distance along the longitudinal direction less than the first distance (See annotated Figure below).
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the cushion element of Giese to have a maximum thickness and the thickness decreases from the maximum thickness towards a heel area and a toe area, as taught by Gross, in order to provide optimum shock absorbing properties, which distribute a user’s foot pressure to deliver a comfortable ball strike during use. When in combination, Giese and Gross teach wherein at least a portion of the maximum thickness is located within the first portion such that the cushion element is configured to improve a pushing off movement by the wearer when Metatarsophalangeal joints of the wearer are pressed into the first portion.
Giese and Gross disclose the invention substantially as claimed above. Giese does not disclose wherein the cushion element comprises a lattice structure, wherein the first portion has a lower stiffness compared to the second portion. However, Guyan teaches a shoe with a cushion element (100) having a lattice structure (108; para.35), wherein a first portion (220) has a lower stiffness compared to a second portion (228)(as seen in Fig.8; para.36-37, 40 & 46).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the cushion element material of Giese for the cushion lattice material of Guyan, as a simple substitution of one well known sole cushioning material for another, in order to yield the predictable result of providing a cushioning material. Further, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the cushion element first and second portions of Giese such that the first portion has a lower stiffness compared to the second portion, as taught by Guyan, in order to provide springiness as the user begins to push off the foot during gait.
Regarding Claim 2, Giese discloses an outsole according to claim 1, wherein the first portion is located further medial relative to the second portion (see annotated Figure above).
Regarding Claim 3, Giese discloses an outsole according to claim 1, wherein the first portion is arranged in an area of the outsole configured to support the most medial Metatarsophalangeal joint (9; Col.2, line 8)(as seen in Fig.1 & 2 and annotated Figure above).
Regarding Claim 4, Giese discloses an outsole according to claim 1, wherein the receiving portion is a recess (i.e. 12/21 is a recess) adapted to the shape of the cushion element, wherein the recess is arranged in a surface of the sole element opposite a running surface (i.e. ground engaging surface of 3/20) of the outsole (as seen in Fig.1 & 2).
Regarding Claim 5, Giese discloses an outsole according to claim 4, wherein a depth of the recess (12/21) measured in a direction perpendicular (i.e. vertical) to the surface on which the outsole is placed when worn by the wearer corresponds to a thickness of the cushion element (as seen in Fig.1 & 2).
Regarding Claim 6, Giese discloses an outsole according to claim 1, wherein the cushion element (14/23) comprises an insert element attached to the sole element, by at least one of an adhesive and welding (Col.2, lines 53-56 & Col.3, lines 22-24).
Regarding Claim 7, Giese discloses an outsole according to claim 1, wherein a support surface (i.e. top surface) opposite a running surface (i.e. ground engaging surface of 3) of the outsole is jointly defined by a top surface of the cushion element and a top surface of the sole element (i.e. top surface of 3,4,5,6/20 & 23), and wherein the top surface of the cushion element is even with the top surface of the sole element (as seen in Fig.1).
Regarding Claim 8, Giese discloses an outsole according to claim 1, wherein the outsole further comprises a cover plate (26), wherein the cushion element (14/23) is disposed between the sole element (3,4,5,6/20) and the cover plate (as seen in Fig.1 & 3).
Regarding Claim 9, Giese discloses an outsole according to claim 1, wherein a bending axis is perpendicular to a longitudinal direction of the outsole and parallel to the surface on which the outsole is to be placed when worn by a wearer, and wherein a bending stiffness of the sole element relative to the bending axis is smaller in the receiving portion than portions of the sole element being adjacent to the receiving portion (i.e. the bending stiffness in receiving portion would be smaller than the portion of the sole rearward of the receiving portion, as the receiving portion is thinner and has less stiff materials than the portion of the sole rearward of the receiving portion), wherein the bending stiffness has a minimum in the receiving portion (i.e. the smaller bending stiffness is a minimum, inasmuch as has been claimed by Applicant), and wherein said minimum is located in a flex portion of the sole element (i.e. the ball region of a shoe is a flex portion).
Regarding Claim 10, Giese discloses an outsole according to claim 1, wherein a cross-sectional area of the receiving portion (12/21) measured in a plane (i.e. lateral plane) perpendicular to a longitudinal direction (i.e. from the toe end to the heel end) of the outsole is smaller than portions of the sole element being adjacent to the receiving portion (as seen in Fig.2, the area of 12/21 is smaller than the remaining portion of 3,4,5,6/20).
Regarding Claim 13, Giese discloses an outsole according to claim 1, wherein the cushion element (14/23) substantially extends from a lateral side of the outsole to a medial side of the outsole (as seen in Fig.2 & 3).
Regarding Claim 14, Guyan further teaches an outsole according to claim 1, wherein the lattice structure comprises a plurality of rod elements (136,176,152; para.46)(as seen in Fig.9A-C).
Regarding Claim 15, Guyan further teaches an outsole according to claim 14, wherein the rod elements in the first portion (220) comprise a lower average diameter than the rod elements in the second portion (228)(as seen in the Figure below, the rod elements in 220 are thinner/lower diameter than the rod elements in 228).
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Regarding Claim 16, Guyan further teaches an outsole according to claim 14, wherein the rod elements in the first portion (220) are arranged less densely than the rod elements in the second portion (228)(as seen in the Figure with Claim 15, the rod elements in 220 are spaced further apart than the rods in 228).
Regarding Claim 17, Giese discloses an outsole according to claim 1, wherein the first portion is located closer to a toe area of the outsole than the second portion (see annotated Figure with Claim 1).
Regarding Claim 18, Modified Giese discloses an outsole according to claim 1, wherein a stiffness of the cushion element measured in a direction (i.e. vertical) perpendicular to the surface (i.e. ground engaging surface) on which the outsole is placed when worn by the wearer continuously increases from the first portion to the second portion (Guyan: para.36-37, 40 & 46).
Regarding Claim 19, Giese discloses an outsole according to claim 1, wherein the sole element comprises at least one stud and wherein the at least one stud overlaps with the cushion element (as seen in the annotated Figure below).
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Regarding Claim 20, Giese discloses a shoe comprising the outsole according to claim 1 (as seen in Fig.1).
Regarding Claim 21, Giese discloses a shoe according to claim 20, wherein the shoe is a football shoe (Abstract; i.e. any athletic shoe can be used to play football in, inasmuch as has been claimed by Applicant).
Regarding Claim 22, When in combination, Giese and Gross teach an outsole according to claim 1, wherein the maximum thickness of the cushion element (Giese as modified by Gross) creates a continuous elevation (i.e. maximum thickness of the cushion) in a ground-contacting portion along the second slope of the sole element extending from the maximum thickness portion towards the tow/toe area that allows for better pushing off by the wearer (i.e. the maximum thickness of the cushion would allow for better push off, inasmuch as has been claimed by Applicant).
Regarding Claim 23, When in combination, Giese and Gross teach an outsole according to claim 22, wherein the sole element comprises a cleat stud (see annotated Figure with Claim 19) disposed on the elevation (Giese as modified by Gross).
Regarding Claim 24, Giese discloses an outsole according to claim 1, wherein the second distance of the maximum thickness portion of the cushion element (14/23) being less than the first distance of the adjacent first slope and second slope provide a rocker effect on a foot of the wearer such that less force is exerted by the wearer to roll the foot over the maximum thickness portion (as seen in Fig.1 and annotated Figure above, 14/23 is “configured to provide” a rocker effect, inasmuch as has been claimed by Applicant, in that it is part of the curved forefoot region which provides a rocking effect while a user is striding through the toe).
Response to Arguments
Applicant's arguments filed March 19, 2026 have been fully considered but they are not persuasive. In view of Applicant's amendment, the search has been updated, and newly modified grounds of rejection have been identified and applied. Applicant's arguments, which are drawn solely to the newly amended limitations, have been considered but are moot in view of the newly modified ground(s) of rejection.
3. Applicant’s Remarks: Applicant asserts Giese '335 does not disclose or suggest providing any "optimum shock absorbing properties" or any other benefits based on the chamfers of insert 75 that are relied upon for the claimed first and second slopes. The Office's combination of Giese '332 and Giese '335 is based on nothing other than impermissible hindsight in an attempt to meet the claim features admittedly missing from Giese '332. Additionally, Applicant argues the height disclosed in Guyan provides only comparative heights for different regions of the lattice. Guyan does not disclose a location of a maximum thickness of the midsole, or how the various stiffness portions of its midsole are positioned relative to the location with maximum thickness. Rather, Guyan discloses the opposite of a maximum height, explaining that "the relatively low height H of the lattice 108 in the call of the foot zone 220 provide less cushion than other zones because the ball of the foot region 86 of the foot 50 is naturally more padded than surrounding regions of the foot 50 and thus includes natural cushion to be compressed by the foot 50 during gait." (Guyan, [0046], emphasis added.) This portion of Guyan teaches away from locating a maximum thickness of the cushion element within the first portion, reasoning that less cushion is needed at the forefoot portion of sole because of the natural cushion provide by the wearers foot.
Examiner’s Response: Examiner respectfully disagrees. While Gross (‘335) may not explicitly speak to benefits based on the that one having ordinary skill in the chamfers of insert 75, Gross clearly teaches 75 is a shock absorbing insert and one having ordinary skill in the art would have found it obvious that the modification provides optimum shock absorbing properties, which distribute a user’s foot pressure to deliver a comfortable ball strike during use. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Giese and Gross disclose the claim limitations, which takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure. Therefore, the Office did not engage in improper hindsight reasoning. Applicant’s argument Guyan does not disclose a location of a maximum thickness of the midsole, or how the various stiffness portions of its midsole are positioned relative to the location with maximum thickness, is moot as Guyan was not used in the rejection to teach the maximum thickness, but was simply used to teach a different type of insole cushioning material. Applicant’s argument that Guyan teaches away from locating a maximum thickness of the cushion element in the forefoot because it teaches lower heights in the ball region, is not found persuasive as Guyan teaches the forefoot region having a height and was not used to teach the maximum thickness in the rejection. For these reasons, Applicant’s arguments are not found persuasive.
4. Applicant’s Remarks: Applicant asserts, with regard to Claim 24, the claimed "rocker effect," as disclosed in the specification, is not simply the gait cycle of a wearer's foot movement as suggested by the Office. Nothing in Giese '332, Giese '335, and Guyan disclose designing an outsole as recited in claim 24 at all, much to create the claimed rocker effect.
Examiner’s Response: Examiner respectfully disagrees. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., an elevated running surface) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further, Giese 14/23 is “configured to provide” a rocker effect, inasmuch as has been claimed by Applicant, in that it is part of the curved forefoot region which provides a rocking effect while a user is striding through the toe. Applicant has provided no claim amendments to distinguish the structure that provides the “rocker effect” over that of Giese. For these reasons, Applicant’s arguments are not found persuasive.
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 MEGAN E LYNCH whose telephone number is (571)272-3267. The examiner can normally be reached Monday to Friday, 8:00am-4:00pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732
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