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
Applicant’s amendment of 05/26/2026 is acknowledged.
Claims 11-30 are presented.
Claims 16-17 and 19 remain withdrawn.
The present Office action treats claims 11-15, 18, and 20-30 on the merits.
The present Office action is a final rejection.
Response to Arguments
Applicant’s REMARKS of 05/26/2026 are fully considered.
Regarding Rejections Under 35 U.S.C. §112 (see p. 6 of the reply): Applicant’s arguments are fully considered and are persuasive. Specifically: upon review of the amendment of 05/26/2026, Applicant’s remarks of 05/26/2026 (see p. 6 lines 15-25 of the reply), and upon further review of the disclosure as filed, Applicant’s amendment has overcome the 35 USC 112 rejections applied in the previous Office action.
Regarding Rejections Under 35 U.S.C. §103 (see p. 7 of the reply): Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Regarding Allowable Subject Matter (see p. 7 of the reply): Applicant’s arguments are fully considered and are persuasive in part. Specifically: upon review of the amendment of 05/26/2026, Applicant’s remarks of 05/26/2026 (see p. 6 lines 15-25 of the reply and p. 7 lines 22-24), and upon further review of the disclosure as filed, Applicant’s amendment has overcome the 35 USC 112 rejections of dependent claims 12-15, 18, and 20 as applied in the previous Office action such that claims 12-15, 18, and 20 are allowable; see Allowable Subject Matter below. However, Applicant’s remarks drawn to newly amended claim 21 and claims dependent thereon (see p. 7 lines 25-28) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Regarding Rejoinder (see p. 8 of the reply): Applicant’s arguments are fully considered. Claims 16-17 and 19 remain withdrawn insofar as all claims directed to the elected invention are not allowable. Attention is drawn to MPEP 821.04(a) which recites in relevant part “Where restriction was required between independent or distinct products, or between independent or distinct processes, and all claims directed to an elected invention are allowable, the examiner should withdraw any restriction requirement between the elected invention and any nonelected invention that depends from or otherwise requires all the limitations of an allowable claim”.
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) 21-25 and 27-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Quinn, US 1,935,519, newly cited] in view of [Pipes, US 2,124,986, newly cited] and [Sessa, US 5,815,949, newly cited].
Regarding claim 21:
Quinn discloses:
a sole structure a (i.e. “tread member...a”; p. 1 lines 85-86) configured to be attached to an upper (via at least attaching an upper – either directly or indirectly – to sole structure a), the sole structure comprising:
a first element 20, 21 (i.e. the combined “neck portion 20” and “wing portions 21”; p. 1 lines 93-94) including a first surface (see annotated Figs. 1 and 6 – a below) configured to oppose the upper and a second surface (see annotated Figs. 1 and 6 – a below) disposed on an opposite side of the first element than the first surface, the second surface defining a receptacle (the receptacle within which the second element 23 and textile panel 24, 25 are provided; for the sake of clarity the extent of the receptacle is not identified in below annotated Figs. 1 and 6 – a) extending through a width (see annotated Figs. 1 and 6 – a below) of the first element from a lateral side edge (see annotated Figs. 1 and 6 – a below) of the sole structure to a medial side edge (see annotated Figs. 1 and 6 – a below) of the sole structure;
a second element 23 (i.e. “wing portions 23”; p. 1 line 96) disposed in the receptacle (as in annotated Figs. 1 and 6 – a below; again it is noted the receptacle is that within which the second element and textile panel are provided) and extending from the lateral side edge of the sole structure to the medial side edge of the sole structure and from a first end (see annotated Figs. 1 and 6 – a below) to a second end (see annotated Figs. 1 and 6 – a below), the second element including a third surface (see annotated Figs. 1 and 6 – a below) configured to oppose the upper and a fourth surface (see annotated Figs. 1 and 6 – a below) disposed on an opposite side of the second element than the third surface; and
a textile panel 24, 25 (i.e. the “textile fabric...having...neck portion 24 and wing portions 25”; p. 1 lines 97-99) including (i) a first portion (see annotated Figs. 1 and 6 – a below) extending from the lateral side edge of the sole structure to the medial side edge of the sole structure (p. 1 lines 87-91; p. 2 lines 31-33; Figs. 1-2), trapped between the second surface of the first element and the third surface of the second element (as in annotated Figs. 1 and 6 – a below), and extending in a direction toward a ground-engaging surface of the sole structure (see annotated Figs. 1 and 6 – a below wherein the first portion identified therein extends toward a ground engaging surface from 24) and (ii) a second portion (see annotated Figs. 1 and 6 – a below) connected to the first portion (Fig. 6), the second portion extending from the lateral side edge of the sole structure to the medial side edge of the sole structure (p. 1 lines 87-91; p. 2 lines 31-33; Figs. 1-2), trapped between the second surface of the first element and the third surface of the second element, and extending to the first portion in a direction away from the ground-engaging surface (as in annotated Figs. 1 and 6 – a below wherein second portion, in a right-to-left direction as presented in Fig. 6 extends to first portion away from the ground-engaging surface).
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Quinn does not expressly disclose the first element is a first cushion.
Quinn does not expressly disclose the second element is a second cushion.
Quinn describes each element as “rubber” (p 1 lines 92-96; p. 2 lines 14-15) and form “tread member a” (p. 2 line 4).
Pipes teaches a rubber element that forms a tread member wherein the rubber element is a cushion: “an outsole of elastic cushion rubber having a tread surface” (p. 2 lines 61-62).
It 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 to have modified the sole structure of Quinn such that its first element is a first cushion and its second element is a second cushion in order to yield the predictable result of a sole structure whose first and second elements are configured to absorb shock and/or provide comfort to the wearer via the cushioning afforded thereby.
Quinn does not expressly disclose An article of footwear comprising: an upper; and the sole structure attached to the upper; the first surface opposing the upper; the third surface opposing the upper
Nevertheless and in further view of Quinn: in Quinn, the sole structure is “adapted to be incorporated in a shoe” (p. 1 lines 7-8) so as to provide a “frictional tread surface” (p. 1 line 10) whereby the textile panel has its “ends exposed only on the tread faces...impart a desirable frictional quality to the tread face” (p. 2 lines 76-78).
Sessa teaches An article of footwear 10 comprising an upper 12 and a sole structure 20, 24 (i.e. the combined 20 and 24) wherein the sole structure is attached to the upper 12 (via at least 16; col. 2 lines 55-61) such that a first surface (of 24) opposes the upper and a third surface (of 20) opposes the upper (Figs. 1 and 3).
Sessa further teaches an “upper” is configured to be “around the wearer’s foot” (col. 1 lines 24-25).
It 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 to have modified the modified Quinn such that its sole structure is attached to an upper so as to yield an article of footwear comprising: the upper; and the sole structure attached to the upper; the first surface opposing the upper; the third surface opposing the upper in order to yield an article of footwear that is capable of both underlying the wearer’s foot via the sole structure and also capable of being worn around the portion of the wearer’s foot that is provided above his foot sole via the upper, as suggested by Sessa (col. 1 lines 24-25) for comfort and/or protection of the portion of the wearer’s foot that is provided above his foot sole.
Regarding claim 22:
Quinn in view of Pipes and Sessa teach The article of footwear of Claim 21, as set forth above.
The modified Quinn further meets the limitation wherein the textile panel includes a third portion (see annotated Figs. 1 and 6 – b below) extending between the second surface of the first cushion and the third surface of the second cushion and connecting the first portion and the second portion (as in annotated Figs. 1 and 6 – b below).
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Regarding claim 23:
Quinn in view of Pipes and Sessa teach The article of footwear of Claim 22, as set forth above.
The modified Quinn further meets the limitation wherein the third portion extends substantially parallel to the ground-engaging surface (as in annotated Figs. 1 and 6 – b presented in above addressing of claim 22).
Regarding claim 24:
Quinn in view of Pipes and Sessa teach The article of footwear of Claim 22, as set forth above.
The modified Quinn further meets the limitation wherein the first portion, the second portion, and the third portion define a substantially U-shape (claim 3; and as in annotated Figs. 1 and 6 – b presented in above addressing of claim 22).
Regarding claim 25:
Quinn in view of Pipes and Sessa teach The article of footwear of Claim 22, as set forth above.
The modified Quinn further meets the limitation wherein the first portion, the second portion, and the third portion are coupled to the second surface of the first cushion and to the third surface of the second cushion (as in annotated Figs. 1 and 6 – b presented in above addressing of claim 22 and as evidenced by the bonding described in Quinn p. 2 lines 14-24).
Regarding claim 27:
Quinn in view of Pipes and Sessa teach The article of footwear of Claim 22, as set forth above.
The modified Quinn further meets the limitation wherein the third portion is substantially planar (as in annotated Figs. 1-6 – b presented in above addressing of claim 22).
Regarding claim 28:
Quinn in view of Pipes and Sessa teach The article of footwear of Claim 21, as set forth above.
The modified Quinn further meets the limitation wherein the first portion and the second portion are coupled to the second surface of the first cushion and to the third surface of the second cushion (as in annotated Figs. 1 and 6 – a presented in above addressing of claim 21 and as evidenced by the bonding described in Quinn p. 2 lines 14-24).
Regarding claim 29:
Quinn in view of Pipes and Sessa teach The article of footwear of Claim 21, as set forth above.
Quinn further discloses wherein the textile panel terminates at the ground-engaging surface (as in annotated Figs. 1 and 6 – a presented in above addressing of claim 21).
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Quinn, US 1,935,519], [Pipes, US 2,124,986], and [Sessa, US 5,815,949] as applied to claim 22 above, and further in view of [Hardy, US 2008/0005929, newly cited].
Regarding claim 26:
Quinn in view of Pipes and Sessa teach The article of footwear of Claim 22, as set forth above.
Quinn does not expressly disclose wherein the first cushion and the second cushion comprise a foam material.
Hardy teaches a rubber cushioning element appropriate for use in sole structure tread wherein a cushion comprises foam material: “outsole or traction surface for a sole assembly may include rubber...foam, and other cushioning technologies, and combinations of the foregoing” (para 8).
It 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 to have modified the modified Quinn such that the first cushion and the second cushion comprise a foam material in order to yield the cushioning effect thereof, as suggested by Hardy (para 8). One of ordinary skill would have been confronted with one or more decision(s) as to how, specifically, to provide the cushion with the function of cushioning and would have expected success in providing such a cushioning effect by choosing to provide the first and second cushions in such a way that the first cushion and the second cushion comprise a foam material based on the teachings of Hardy.
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Quinn, US 1,935,519], [Pipes, US 2,124,986], and [Sessa, US 5,815,949] as applied to claim 22 above, and further in view of [Leimer, US 2017/0348935, previously cited].
Regarding claim 30:
Quinn in view of Pipes and Sessa teach The article of footwear of Claim 21, as set forth above.
Quinn does not expressly disclose wherein the textile panel is an embroidered textile.
Leimer teaches a footwear textile panel (“fabric”; para 70) wherein the textile panel is an embroidered textile (“embroidered”; para 70). Leimer further teaches that providing a textile panel is an embroidered textile results in improvement of tear strength of the textile panel (para 70).
It 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 to have modified the modified Quinn such that the textile panel is an embroidered textile in order to improve the tear strength of the textile panel during manufacture and/or during use, as suggested by Leimer (para 70).
Allowable Subject Matter
Claims 11-15, 18, and 20 are allowed over the art of record.
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 GRADY A NUNNERY whose telephone number is (571)272-2995. The examiner can normally be reached 8-5 M-F.
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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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/GRADY ALEXANDER NUNNERY/Examiner, Art Unit 3732
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