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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/18/2025 has been entered.
Response to Amendment
Applicant’s amendment of 09/18/2025 is acknowledged.
Claims 11-30 are presented.
Claims 16-17 and 19 remain withdrawn.
Claims 11 and 21 are presented in independent form and are amended.
The present Office action treats claims 11-15, 18, and 20-30 on the merits.
The present Office action is a non-final rejection.
Response to Arguments
Applicant’s REMARKS of 09/18/2025 (see p. 6-10 of the reply) are fully considered.
Regarding Rejections Under 35 U.S.C. §103 (p. 6-9):
Applicant’s arguments directed to independent claim 11 and those claims dependent thereon are fully considered and are persuasive. Specifically, claim 11 has been amended so as to distinguish the claimed article of footwear over prior art [McCord, US 2,640,283] in view of [Pinotkowski, US 2016/0081425] and [Workman, US 2004/0088883], and claim 11, as amended, and those claims dependent thereon are free of art rejections.
Applicant’s arguments directed to independent claim 21 and claims dependent thereon 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.
Allowable Subject Matter
Claim 11 is allowed over the art of record.
Claim 30
Claim 30 is free of art rejections and is subject to 35 USC 112 rejection.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 12-15, 18, and 20 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Each of claims 12-15, 18, and 20 fails to include all the limitations of claim 11, on which each of the claims depends. It is noted that claims 12-15, 18, and 20 fail to include the article of footwear and the upper of claim 11. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims 22-30 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Each of claims 22-30 fails to include all the limitations of claim 21, on which each of the claims depends. It is noted that claims 22-30 fail to include the article of footwear and the upper of claim 21. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 [Russell, US 2,333,201, newly cited] in view of [Hernadez, US 2001/0001904, newly cited], [Childs, US 1,036,452, newly cited], and [Piontkowski, US 2016/0081425, previously cited].
Regarding claim 21:
Russell discloses (Figs. 1-4):
a sole structure (“composite outsole”; p. 1 lines 28-29; no specific numeral provided therefor; elements thereof identified hereinbelow) configured to be attached to an upper, the sole structure comprising:
a first layer 12 including a first surface (see annotated Figs. 1-4 – a below) configured to oppose the upper and a second surface (see annotated Figs. 1-4 – a below) disposed on an opposite side of the first cushion than the first surface, the second surface defining a receptacle 18 extending through a width of the first cushion from a lateral side edge (see annotated Figs. 1-4 – a below) of the sole structure to a medial side edge (see annotated Figs. 1-4 – a below) of the sole structure;
a second layer 14 disposed in the receptacle (p. 2 lines 23-31; Fig. 4) and extending from the lateral side edge of the sole structure to the medial side edge of the sole structure (as in Fig. 3) and from a first end (see annotated Figs. 1-4 – a below) to a second end (see annotated Figs. 1-4 – a below), the second layer including a third surface (see annotated Figs. 1-4 – a below) configured to oppose the upper and a fourth surface (see annotated Figs. 1-4 – a below) disposed on an opposite side of the second cushion than the third surface; and
a panel 24, 26 (i.e. the combined “film 24” and “film 26”; p. 2 lines 50-53) including
(i) a first portion (see annotated Figs. 1-4 – a below) extending from the lateral side edge of the sole structure to the medial side edge of the sole structure, trapped between the second surface of the first cushion and the third surface of the second cushion, and extending in a direction (see annotated Figs. 1-4 – a below) toward a ground-engaging surface of the sole structure and (ii) a second portion (see annotated Figs. 1-4 – a below) connected to the first portion, the second portion extending from the lateral side edge of the sole structure to the medial side edge of the sole structure, trapped between the second surface of the first cushion and the third surface of the second cushion, and extending to the first portion in a direction (see annotated Figs. 1-4 – a below) away from the ground-engaging surface.
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Russell does not expressly disclose:
An article of footwear comprising:
an upper; and
the sole structure attached to the upper, the sole structure comprising:
the first surface opposing the upper
the third surface opposing the upper
However, Hernadez teaches an article of footwear 10 comprising an upper 12 and a sole structure 16 attached to the upper 12 (“Footwear of the type having a shoe upper and an outsole joined together”; claim 5).
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 Russell such that it is attached to an upper such that the first surface is opposing the upper and the third surface is opposing the upper, thereby yielding an article of footwear comprising an upper; and the sole structure attached to the upper, the sole structure comprising: the first surface opposing the upper the third surface opposing the upper in order to yield the predictable result of an article of footwear that is configured to cover portions of a wearer’s foot underneath his foot sole via the sole structure and also portions of the wearer’s foot above his foot sole via the upper attached thereto.
Russell does not expressly disclose the first layer 12 is first cushion.
Russell describes layer 12 as a “leather layer”; p. 1 line 55.
Childs teaches a sole structure (i.e. “support”; p. 1 line 37, no specific numeral provided therefor) comprising a leather layer 12 wherein said leather layer is a cushion: “cushion 12 of leather”; p. 1 line 96). Childs further teaches the cushion is “for...comfort” (p. 2 line 82).
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 Russell such that its first layer is a first cushion in order to provide comfort, as taught by Childs (p. 2 line 82).
Russell does not expressly disclose the second layer 14 is a second cushion.
Russell describes layer 14 as a “tread or facing layer” (p. 1 lines 46-52).
Piontkowski teaches a tread or facing layer that is a cushion: “compressible...outsole[]” which provides an article of footwear with cushioning of impact forces on the body during walking or running (para 25) and configured to “reduce...forces on the user’s body” during the gait cycle (para 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 Russell such that its layer 14 is a cushion in order to cushion impact forces from the body during walking or running and/or to reduce forces on the user’s body during a gait cycle, as taught by Piontkowski (para 25).
Regarding claim 22:
Russell in view of Hernadez, Childs, and Piontkowski teach The sole structure of Claim 21, as set forth above.
Russell further discloses wherein the panel includes a third portion (see annotated Figs. 1-4 – 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.
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Regarding claim 23:
Russell in view of Hernadez, Childs, and Piontkowski teach The sole structure of Claim 22, as set forth above.
Russell further discloses wherein the third portion extends substantially parallel to the ground-engaging surface (as in annotated Figs. 1-4 – b presented in above addressing of claim 22).
Regarding claim 24:
Russell in view of Hernadez, Childs, and Piontkowski teach The sole structure of Claim 22, as set forth above.
Russell further discloses wherein the first portion, the second portion, and the third portion define a substantially U-shape (as in annotated Figs. 1-4 – b presented in above addressing of claim 22 wherein the portions identified define a substantially U-shape).
Regarding claim 25:
Russell in view of Hernadez, Childs, and Piontkowski teach The sole structure of Claim 22, as set forth above.
The modified Russell further meets the limitation wherein the first portion, the second portion, and the third portion are coupled to the second surface (Russell Fig. 4; p. 1 lines 43-49) of the first cushion and to the third surface (Russell Fig. 4; p. 1 lines 36-49) of the second cushion.
Regarding claim 27:
Russell in view of Hernadez, Childs, and Piontkowski teach The sole structure of Claim 22, as set forth above.
Russell further discloses wherein the third portion is substantially planar (as in annotated Figs. 1-4 – b presented in above addressing of claim 22).
Regarding claim 28:
Russell in view of Hernadez, Childs, and Piontkowski teach The sole structure of Claim 21, as set forth above.
The modified Russell further meets the limitation wherein the first portion, the second portion, and the third portion are coupled to the second surface (Russell Fig. 4; p. 1 lines 43-49) of the first cushion and to the third surface (Russell Fig. 4; p. 1 lines 36-49) of the second cushion.
Regarding claim 29:
Russell in view of Hernadez, Childs, and Piontkowski teach The sole structure of Claim 21, as set forth above.
Russell further discloses wherein the panel terminates at the ground-engaging surface.
(panel terminates on medial and lateral side edges of the sole structure between first cushion 12 and second cushion 14; each of the locations on the medial and lateral side edges where the panel terminates is “at” the ground-engaging surface insofar as the term “at” means “In or near the area occupied by; in or near the location of” at. (n.d.) American Heritage® Dictionary of the English Language, Fifth Edition. (2011). Retrieved February 24 2026 from https://www.thefreedictionary.com/at)
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Russell, US 2,333,201], [Hernadez, US 2001/0001904], [Childs, US 1,036,452], and [Piontkowski, US 2016/0081425] as applied to claim 22 above and further in view of [Schmidt, DE-20211437-U1, newly cited] and [Gillespie, US 7,168,190, previously cited].
Regarding claim 26:
Russell in view of Hernadez, Childs, and Piontkowski teach The sole structure of Claim 22, as set forth above.
Russell does not expressly disclose the first cushion and the second cushion comprise a foam material.
Schmidt teaches a “synthetic leather” (title) appropriate for footwear (p. 8 line 18) comprising a foam material (“foam layer 6”; p. 4 line 32).
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 Russell such that its first cushion is a synthetic leather comprising a foam material in order to yield the predictable result of a sole structure whose synthetic leather is desirable for a user who eschews animal products.
Gillespie teaches “foam outsoles conform to” a ground surface “for a smoother, more comfortable feel during a typical gait cycle...material allows sole 120 to provide cushioning and support” (col. 4 lines 42-45).
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 Russell such that its second cushion comprises a foam material in order to provide a smooth and comfortable feel during a typical gait cycle and/or to provide cushioning and/or support, as taught by Gillespie (col. 4 lines 42-45).
Conclusion
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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/GRADY ALEXANDER NUNNERY/Examiner, Art Unit 3732