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
In accordance with Applicant’s amendment filed 12/11/2025, claims 19 and 26 are amended. Claims 1, 4-22, 25-26 are currently pending and presented for examination on the merits.
Applicant’s amendment has not overcome the previously presented objections to the claims.
Response to Arguments
Applicant's arguments filed 12/11/2025 have been fully considered but they are not persuasive.
Regarding the 35 USC 103 rejections of claims 1 and 20, Applicant argues that the Examiner should have included the upper (110) of Bell in the rejection. Examiner respectfully disagrees. Bell teaches in paragraph 76 (emphasis added): “FIGS. 1 through 10 illustrate an exemplary embodiment of an article of footwear 100 with a decoupled foot stabilizer system 120. Referring to FIG. 1, article of footwear 100 is shown in an exploded view. In some embodiments, article 100 may include a number of individual components. In this embodiment, article 100 includes decoupled foot stabilizer system 120. Article 100 additionally may include an upper 110 and a sole structure 140.” The phrase “additionally may include” indicates that the upper is not a required feature, although some figures may illustrate the inclusion of the upper. Therefore, Examiner maintains that the mapping of the features in Bell to the claims was reasonable as presented in the rejection. Applicant’s further arguments in regards to how the rejection should have mapped features to the upper (110) of Bell (i.e., that Bell does not teach the limitation “wherein the second height is at least two times the first height and less than four times the first height” wherein Applicant assumed that the outer wall must be the wall of the upper 110) are therefore not commensurate with the scope of the rejection as presented by the Examiner.
Applicant further argues that Lee does not teach the limitation “wherein the second height is at least two times the first height and less than four times the first height”. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Lee was not relied upon to teach the limitation “wherein the second height is at least two times the first height and less than four times the first height”; that feature was taught by Bell.
Applicant further argues that there is no motivation to combine the teachings of Lee with Bell. Examiner respectfully disagrees. Applicant alleges “there is no evidence or objective reason why either of the inner bootie heel (122) or the outer heel wall (110) of Bell should be pivoted inward for any reason” (Remarks, page 17-18), but has not addressed or specifically argued against the clear reasoning provided in the rejection, which came from the Lee reference and was, in its entirety: “to improve the connection between the heel of the shoe and the user when the heel is worn upright (Lee, “when used as a shoe wrapping around the heel, the folding material tightly wraps around the heel, so that a shoe with a slipper function that does not easily come off can be obtained” paragraph 8), while also allowing easy slip-in when desired as the folding elastic material folds down easily when desired (Lee, “a curved boundary point is formed at the bottom of the folding material […] which makes it easy to transform into a slipper” paragraph 8). Additionally, this construction will preserve the integrity of the upper when the heel area is folded down, as described in paragraph 22 of Lee, as it is sewn particularly to allow smooth folding that will have a clean bend.” (Non-final rejection mailed 9/11/2025, page 7). Applicant included a short citation of the rejection, and submitted that it was “not well reasoned” but did not clearly explain why the full reasoning presented in the rejection was allegedly lacking. Applicant’s argument that “the cleated shoe of Bell is not intended for casual use with a flat back heel wall” is unpersuasive. A user might want to put the shoe on quickly, for instance if they are running late, and the modification by Lee facilitates that ability while also maintaining the shoe’s utility as an athletic shoe or cleat because the heel can still be worn in the upright position as well, as described clearly in the rejection. Applicant further alleges that the rationale presented by the office is a “conclusory statement” (Remarks, page 18) and again cites an abridged section of the rejection. In response, Examiner again directs the Applicant to the full citation of the rationale presented above, which includes direct citations from the Lee reference to support the motivation and rejection. MPEP 2145(X)(C) states, “A teaching, suggestion, or motivation to combine references that is found in the prior art is an appropriate rationale for determining obviousness. KSR, 550 U.S. at 418, 82 USPQ2d at 1396.” Examiner maintains that the rejection is properly reasoned and supported by the direct teachings of the Lee reference.
Applicant further argues that “the rear heel wall of the inner bootie (122) in Bell is so high that folding it downward would actually block access to the foot cavity and render Bell unsatisfactory for its intended purpose” (Remarks, page 18). Examiner respectfully disagrees and submits that this is merely attorney argument that is not supported by sufficient evidence in the record. See MPEP 2143(I) which states, “Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.").” There is no evidence in the record that the folding of the heel inward, especially a flexible heel like the one taught by Lee and added to Bell in the proposed modification, would necessarily and unequivocally block access to the foot cavity to the extent that the shoe of Bell would be unusable as footwear.
Applicant asserts “there is no reason why or evidence to suggest that the Office’s proposed addition of ‘folding elastic material to the heel area’ of Bell would somehow ‘improve the connection between the heel of the shoe and the user’” (Remarks, page 18). Examiner respectfully disagrees, as the reasoning presented in the rejection is directly supported by the Lee reference (see Lee, paragraph 8, cited in the rejection).
Applicant further alleges “the use of folded elastic material in the heel area of Bell would change the principle of operation of Bell” (Remarks, page 19). Examiner respectfully disagrees. Bell teaches an article of footwear. Changing the material of the shoe in the heel area does not change its principle of operation, as doing so would not make it inoperable as an article of footwear.
Regarding the 35 USC 103 rejection of claim 22, Applicant argues that Fallon does not teach “seam tape in association with a foldable heel in an article of footwear” and there is “no discussion of the strategic placement of tape at a position on a foldable heel that is forward of a fold, wherein the fold is ‘formed in the lip of the mouth on a posterior side of the seam when the heel cup is in the folded position’” (Remarks, page 20). In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Fallon was only relied upon to teach the use of seam tape for a seamless connection; it was not relied upon to teach a foldable heel or the particular location of the fold in comparison to the seam, as those limitations were taught by Lee. See annotated figure 3 of Lee that was provided with the rejection of claim 22, showing the location of the fold and the location of the seam, reproduced below. Applicant has not presented any arguments regarding why Lee does not sufficiently teach the claimed limitations regarding the fold and seam placement, therefore Examiner maintains that the combination of Bell/Lee/Fallon teaches all limitations of the claim.
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Applicant asserts that the dependent claims are allowable based on their dependency from the independent claims; however, as described in the arguments above and rejections below, the independent claims are not allowable over the prior art. The dependent claims remain rejected.
Claim Objections
Claim 26 is objected to because of the following informalities: the claim is missing a period at the end of the claim. 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 7-10, 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bell (US 2012/0011744) in view of Lee (KR 101222159B1), a machine translation of which was provided with the Office action mailed 4/22/2025.
Regarding claim 1, Bell discloses: An article of footwear comprising: a sole structure (130 and 140) including a footbed (130); and an upper including: an outer shell (200) coupled to the sole structure, the outer shell including an outer heel wall (204) oriented generally orthogonal to the footbed; and an inner shell (122) non-removably connected to the sole structure (“foot stabilizer system 120 may be attached to base portion 130 at a central attachment portion 131 that extends substantially along longitudinal axis 20” paragraph 99; Examiner notes the foot stabilizer system 120 includes the bootie 122 and strap system 200 which also includes the heel counter 204; “central attachment portion 131, forefoot attachment portion 133, and/or heel attachment portion 135 securely attaches foot stabilizer system 120 to base portion 130 using stitching” paragraph 102), the inner shell including an inner heel wall generally aligned with the outer heel wall (see figure 2 showing the inner heel wall of the bootie 122 is generally aligned with the outer heel wall 204); wherein the outer heel wall extends a first height above the footbed and the inner heel wall extends a second height above the footbed (see figure 2 below), wherein the second height is at least two times the first height and less than four times the first height (see figure 2 below showing the first height and second height; it is clear from the figure that the second (inner heel wall) height is at least two times and less than four times the first (outer heel wall) height).
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Bell but does not explicitly disclose: wherein a gap is provided between the inner heel wall and the outer heel wall such that the inner heel wall is pivotable away from the outer heel wall from a first position in which the inner heel wall is oriented generally parallel to the outer heel wall, to a second position in which the inner heel wall is oriented generally orthogonal to the outer heel wall.
However, Lee teaches an upper for an article of footwear comprising an inner heel wall (30) and an outer heel wall (heel area of 20, see figure 5 annotated below), wherein a gap is provided between the inner heel wall and the outer heel wall (see the gap in figure 5, also annotated below) such that the inner heel wall is pivotable away from the outer heel wall from a first position in which the inner heel wall is oriented generally parallel to the outer heel wall (see figure 4 showing the inner heel wall in the first position where the inner heel wall is oriented generally parallel to the outer heel wall), to a second position in which the inner heel wall is oriented generally orthogonal to the outer heel wall (see figure 5 showing the inner heel wall in the second position where the inner heel wall is oriented generally orthogonal to the outer heel wall). Lee also teaches a method to modify existing shoes to have the described structure (see paragraph 24).
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Lee teaches analogous art to the instant application in the field of footwear with pivotable heels. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to modify the bootie of Bell using the method taught by Lee to add a section of folding elastic material to the heel area of the shoe in order to improve the connection between the heel of the shoe and the user when the heel is worn upright (Lee, “when used as a shoe wrapping around the heel, the folding material tightly wraps around the heel, so that a shoe with a slipper function that does not easily come off can be obtained” paragraph 8), while also allowing easy slip-in when desired as the folding elastic material folds down easily when desired (Lee, “a curved boundary point is formed at the bottom of the folding material […] which makes it easy to transform into a slipper” paragraph 8). Additionally, this construction will preserve the integrity of the upper when the heel area is folded down, as described in paragraph 22 of Lee, as it is sewn particularly to allow smooth folding that will have a clean bend. See the annotated figure 2 of Bell below showing the area that would be replaced by the “folding material” in the heel as described in Lee, and how the structure, in particular the mouth of the ankle opening, would be altered as a result.
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Regarding claim 7, Bell as modified discloses: The article of footwear of claim 1 wherein the inner shell is a bootie (Bell, 122 is a bootie) including a hindfoot portion coupled to a forefoot portion (as modified, the bootie of Bell has a hindfoot portion (heel portion of Lee) coupled to a forefoot portion (it is coupled to rest of the bootie, which includes a forefoot portion, so it is coupled to the forefoot portion of the bootie)), the bootie and the outer shell non-removably connected along the sole structure (“foot stabilizer system 120 may be attached to base portion 130 at a central attachment portion 131 that extends substantially along longitudinal axis 20” paragraph 99; Examiner notes the foot stabilizer system 120 includes the bootie 122 and strap system 200 which also includes the heel counter 204).
Regarding claim 8, Bell as modified discloses: The article of footwear of claim 7 the bootie includes a mouth providing an opening into a foot cavity (Bell, 128, “bootie 122 may include a throat hole or opening 128 for receiving a foot of a wearer” paragraph 85), wherein a lip extends around the mouth (the mouth necessarily has a lip, which is understood to be the rim or edge of the opening), wherein the second position is an upright position (the second position as defined in claim 1 is the upright position), and wherein an entirety of the mouth is outside of the outer shell when the inner heel wall is in the upright position (see figure 2 of Bell showing the bootie in the upright position, the opening 128 is entirely outside of the outer shell in this position).
Regarding claim 9, Bell as modified discloses: The article of footwear of claim 8 wherein, when the inner heel wall is in the upright position, the lip of the mouth extends continuously from a dorsum crest, to a lateral trough, to a heel apex, to a medial trough, and back to the dorsum crest, wherein the dorsum crest extends a first vertical height (h1) above the lateral trough, and wherein the heel apex extends a second vertical height (h2) above the lateral trough (see annotated figure 4 of Lee below, showing the dorsum crest, lateral trough, and heel apex, noting that a symmetrical lateral trough would also exist on the opposite side that is not visible in the figure).
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Regarding claim 10, Bell as modified discloses: The article of footwear of claim 9 wherein 1.0 < (h1/h2) < 2.0 (see annotated figure 4 of Lee provided with the 35 USC 103 rejection of claim 9 above showing the difference in the heights).
Regarding claim 20, Bell discloses: An article of footwear including a heel region, a midfoot region and a forefoot region, the article of footwear comprising: a sole (130 and 140); an upper (120) connected to the sole, the upper and the sole forming a foot cavity; and an insole positioned within the foot cavity (“sole structure may include one or more of an insole” paragraph 121); wherein, the upper comprises: an outer shell (200, including 204) extending from the heel region to the forefoot region (see figure 2), the outer shell including an outer heel wall (204) defining an upper perimeter, and a bootie (122) positioned within the outer shell and extending from the heel region to the forefoot region (see figure 2), the bootie non-removably connected to the outer shell along the sole (“foot stabilizer system 120 may be attached to base portion 130 at a central attachment portion 131 that extends substantially along longitudinal axis 20” paragraph 99; Examiner notes the foot stabilizer system 120 includes the bootie 122 and strap system 200 which also includes the heel counter 204; “central attachment portion 131, forefoot attachment portion 133, and/or heel attachment portion 135 securely attaches foot stabilizer system 120 to base portion 130 using stitching” paragraph 102) and wherein the outer heel wall extends a first height above the sole and the posterior wall of the inner heel cup extends a second height above the sole, wherein the second height is at least two times the first height and less than four times the first height (see figure 2 provided with the 35 USC 103 rejection of claim 1 above showing the first height and second height; it is clear from the figure that the second (inner heel wall) height is at least two times and less than four times the first (outer heel wall) height).
Bell does not explicitly disclose: an inner heel cup configured to be moved between an upright position and a folded position, wherein a posterior wall of the inner heel cup extends above the upper perimeter of the outer heel wall when the inner heel cup is in the upright position, and wherein the posterior wall of the inner heel cup is laid against the insole when the inner heel cup is in the folded position.
However, Lee teaches an upper for an article of footwear comprising an inner heel cup (30) and an outer heel wall (heel area of 20, see figure 5 annotated with the 35 USC 103 rejection of claim 1 above), the inner heel cup configured to be moved between an upright position and a folded position, wherein a posterior wall of the inner heel cup extends above the upper perimeter of the outer heel wall when the inner heel cup is in the upright position (see figure 4 showing the inner heel cup in the upright position where the inner heel cup extends above the upper perimeter of the outer heel wall), and wherein the posterior wall of the inner heel cup is laid against the insole when the inner heel cup is in the folded position (see figure 5 showing the inner heel cup in the folded position where the inner heel cup is laid against the inner surface of the sole). Lee also teaches a method to modify existing shoes to have the described structure (see paragraph 24).
Lee teaches analogous art to the instant application in the field of footwear with pivotable heels. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to modify the bootie of Bell using the method taught by Lee to add a section of folding elastic material to the heel area of the shoe in order to improve the connection between the heel of the shoe and the user when the heel is worn upright (Lee, “when used as a shoe wrapping around the heel, the folding material tightly wraps around the heel, so that a shoe with a slipper function that does not easily come off can be obtained” paragraph 8), while also allowing easy slip-in when desired as the folding elastic material folds down easily when desired (Lee, “a curved boundary point is formed at the bottom of the folding material […] which makes it easy to transform into a slipper” paragraph 8). Additionally, this construction will preserve the integrity of the upper when the heel area is folded down, as described in paragraph 22 of Lee, as it is sewn particularly to allow smooth folding that will have a clean bend. See the annotated figure 2 of Bell provided with the 35 USC 103 rejection of claim 1 above showing the area that would be replaced by the “folding material” in the heel as described in Lee, and how the structure, in particular the mouth of the ankle opening, would be altered as a result.
Regarding claim 21, Bell as modified discloses: The article of footwear of claim 20 wherein the posterior wall of the inner heel cup is further positioned below the upper perimeter of the outer heel wall when the inner heel cup is in the folded position (as modified, the posterior wall of the inner heel cup can fold down completely, as taught by Lee, so it would be positioned below the upper perimeter of the outer heel wall (Bell, 204) when in the folded position).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bell/Lee in view of Power (US 4459765).
Regarding claim 4, Bell as modified does not explicitly disclose: The article of footwear of claim 1 further comprising a stabilization bar coupled to an exterior surface of the outer heel wall.
However, Power teaches: a heel stabilizer (20) coupled to an exterior surface of the outer heel wall of a shoe (“stabilizer 20 is fitted in a hemispherical arc about the back of shoe 25 in the manner illustrate” column 3, lines 10-11; see figures 3 and 4).
Power teaches analogous art to the instant application in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to add the heel stabilizer as taught by Power to the outer heel wall of Bell in order to “[provide] sufficient structural strength and support between the shoe counter and heel to alleviate many of the problems associated with pronation and supination. It also helps to prevent the outward bulging or blowout of the midsole and heel wedge, especially those made of ultra-light, highly cushioning material” (Power, column 4, lines 8-14).
Claim(s) 5, 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bell/Lee in view of Hayashi (US 3583081).
Regarding claim 5, Bell as modified discloses: The article of footwear of claim 1 wherein the outer shell is comprised of a perforated material (Bell, “ each of the plurality of strap members 200 may include a lacing hole disposed at the distal end of the strap member” paragraph 113; the lacing holes may be considered perforations, so the outer shell is comprised of a perforated material).
Bell as modified does not explicitly disclose: the inner shell is comprised of a foam layer positioned between an inner layer of four-way stretch material and an outer layer of four-way stretch material.
However, Hayashi teaches: an upper material for footwear, wherein the material is comprised of a foam layer (intermediate layer 22; “intermediate layer 22 formed of resilient porous synthetic resin rubber or natural rubber, e.g., poly-urethan-foam” column 2, lines 48-50) positioned between an inner layer of four-way stretch material (inner layer 23; “inner layer 23 […] knit of synthetic fiber having […] relatively high elasticity” column 2, lines 51-54) and an outer layer of four-way stretch material (outer layer 21; “outer layer 21 […] knit of synthetic or natural fiber” column 2, lines 42-43).
Hayashi teaches analogous art to the instant application in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to make the stretchable upper material of the bootie of Bell (“bootie 122 may be made from any one or a combination of elastic or stretchable materials” Bell, paragraph 85) specifically out of the upper material as taught by Hayashi in order to “[absorb] shocks and other forces exerted from the outside thereby preventing such impact from being directly delivered to the foot beneath the upper” (Hayashi, column 3, lines 1-3), therefore increasing comfort for the user as they will not feel outside impacts. Additionally “breathing effected in response to the stretch and compression of said intermediate layer facilitate ventilation, effecting efficient exhalation of perspiration and adding to wearing comfort, whereby an athletic shoe applicable without undue fatigue can be provided” (Hayashi, column 3, line 40-column 4, line 1), which will keep the user’s feet cooler and more comfortable.
Regarding claim 14, Bell as modified discloses: The article of footwear of claim 8 wherein the article of footwear is a shoe (Bell, article of footwear 100 is a shoe).
Bell as modified does not explicitly disclose: wherein the bootie comprises a textile laminate comprising an interior layer facing the foot cavity, wherein an exterior layer facing the outer shell and forming a portion of exterior of the shoe, and wherein an intermediate layer disposed between interior and exterior layers.
However, Hayashi teaches: an upper material for footwear, wherein the material is a textile laminate (“heated at a definite high temperature as used conventionally, said intermediate layer 22 is fused as to adhere to both layers 21 and 23 by a pressing unit not through adhesive, thereby that said layers 21, 22, and 23 are integrally and inseparably fused to each other” column 2, lines 54-59) comprised of an intermediate layer (intermediate layer 22) disposed between interior (inner layer 23) and exterior layers (outer layer 21)
Hayashi teaches analogous art to the instant application in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to make the stretchable upper material of the bootie of Bell (“bootie 122 may be made from any one or a combination of elastic or stretchable materials” Bell, paragraph 85) specifically out of the upper material as taught by Hayashi in order to “[absorb] shocks and other forces exerted from the outside thereby preventing such impact from being directly delivered to the foot beneath the upper” (Hayashi, column 3, lines 1-3), therefore increasing comfort for the user as they will not feel outside impacts. Additionally “breathing effected in response to the stretch and compression of said intermediate layer facilitate ventilation, effecting efficient exhalation of perspiration and adding to wearing comfort, whereby an athletic shoe applicable without undue fatigue can be provided” (Hayashi, column 3, line 40-column 4, line 1), which will keep the user’s feet cooler and more comfortable.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bell/Lee/Hayashi in view of Dillenbeck (US 2011/0271556).
Regarding claim 6, Bell as modified as modified discloses: The article of footwear of claim 5 wherein the perforated material is inelastic (Bell, “plurality of strap members 200 may be made of a substantially rigid material: paragraph 87).
Bell as modified does not explicitly disclose: the perforated material is an inelastic fabric.
However, Dillenbeck teaches a perforated inelastic fabric for use in a shoe upper (“quarter pieces 28 are made of a combination of a relatively rigid mesh material” paragraph 16; the mesh material is the perforated material and it is rigid, therefore it is considered to be inelastic).
Dillenbeck teaches analogous art to the instant application in the field of footwear with foldable heels. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to make the pieces 200, 204 of Bell out of a rigid mesh material, as taught by Dillenbeck, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See MPEP 2144.07. Further, the use of a rigid mesh would allow for improved breathability and ventilation while maintaining the structural support required of the foot stabilizer system of Bell.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bell/Lee in view of Ho (US 2010/0236100).
Regarding claim 11, Bell as modified appears to disclose: The article of footwear of claim 10 wherein the lateral trough is a first horizontal length (l1) from the dorsum crest, wherein the lateral trough is a second horizontal length (l2) from the heel apex, and wherein 0.9 <(l1/l2)< 1.1 (see annotated figure 4 of Lee provided with the 35 USC 103 rejection of claim 9 above showing the lateral trough and the dorsum crest and heel apex).
However, assuming arguendo that this is not an exact teaching of the ratio described in the claim, Ho teaches a lateral trough that is a first horizontal length (l1) from a dorsum crest, wherein the lateral trough is a second horizontal length (l2) from a heel apex, and wherein 0.9 < ( l1 / l2 ) < 1.1 (see annotated figure 3 of Ho provided below; the lateral trough is approximately the same length from the dorsum crest and the heel crest, therefore the first and second horizontal lengths meet the ratio as claimed).
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Ho teaches analogous art to the instant application in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to make the lateral trough of Bell as modified approximately the same horizontal distance from the dorsum crest and the heel apex, as taught by Ho, in order to better accommodate the ankle bone of the wearer and create a pleasing aesthetic appearance due to the symmetry.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bell/Lee in view of Patel (US 2014/0059742).
Regarding claim 19, Bell as modified does not explicitly disclose: The article of footwear of claim 1 further comprising a triangular foam pad positioned on the inner heel wall, wherein a vertex of the triangular foam pad points upward when the inner heel wall is in the first position, and wherein the vertex of the triangular foam pad points to a forefoot of the article of footwear when the inner heel wall is in the second position.
However, Patel teaches a triangular foam pad (14f; “the material of the heel paddings can be made of a flexible and durable material such as polyurethane foam” paragraph 59) wherein a vertex of the triangular foam pad points upward (see figure 4C).
Patel teaches analogous art to the instant application in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to add a pouch with a removable triangular heel pad to the inside of the inner heel wall of Bell as modified in order to “achieve [a] desirable shoe fit and comfort even if the shoe size does not match the wearer’s foot size” (Patel, paragraph 4) because the padding “compensates for gaps in an oversized shoe, such as the one between the heel of a wearer and the counter, by assisting to push the foot forward in the shoe” (Patel, paragraph 5). It is further beneficial for the padding to be removably located in a pouch because “[the] opportunity to customize the fitting for each foot separately can be especially advantageous for an individual with mis-matched feet, as the size of one foot may not necessarily be the same size as the other foot” (Patel, paragraph 50), so the user can selectively choose whether to use or remove the padding as desired depending on the specific sizes of their individual feet. Examiner notes that, as modified, a vertex of the triangular foam pad would point upward when the inner heel wall is in the upright (first) position, and that same vertex would then point to a forefoot of the article of footwear when the inner heel wall is in the folded (second) position due to the orientation shown in figure 4C of Patel.
Claims 12-13, 22, 25-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bell in view of Lee, and further in view of Fallon (US 2015/0047227).
Regarding claim 12, Bell as modified does not explicitly disclose: The article of footwear of claim 8 wherein a first length of tape provides a coupling between the hindfoot portion and a forefoot portion on a medial side of the bootie, and wherein a second length of tape provides a coupling between the hindfoot portion and the forefoot portion on a lateral side of the bootie.
However, Fallon teaches: a coupling member (215) for attaching pieces of an upper “the corresponding edges […] are stitched together, and the coupling member 215 (e.g., fabric tape) is applied such that the coupling member bridges the connection between the portions 205, 210, covering the stitching, Preferably, the coupling member 215 is disposed on both the interior and exterior surfaces of the upper 105. Heat is then applied to the coupling member 215 to seal the seam, fixing the member to the upper 105. With this configuration, the coupling member 215 provides a seamless connection that minimizes and/or eliminates the friction caused by conventional (exposed) seams. That is, a seamless connection is provided because the coupling member 215 creates a generally uninterrupted and/or continuous surface along the interior surface and/or exterior surface of the upper 105” (paragraphs 50-51).
Fallon teaches analogous art to the instant application in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to add the coupling member (215) as taught by Fallon to the inside and outside surfaces of the seams between the heel portion and the remainder of the bootie of Bell as modified by Lee in order to “[create] a generally uninterrupted and/or continuous surface along the interior surface and/or exterior surface of the upper” which will “[minimize] and/or [eliminate] the friction caused by conventional (exposed) seams” (paragraph 51). Further, it will reinforce the seam and further prevent it from potentially unraveling or becoming undone due to wear and tear. Examiner notes that as modified, the coupling member (fabric tape) as taught by Fallon is provided on the seam of Bell as modified by Lee, so there is a length of tape on the medial side and a length of tape on the lateral side.
Regarding claim 13, Bell as modified discloses: The article of footwear of claim 12 wherein: the first length of tape extends upward from an inner bottom position on the medial side of the bootie, around the lip, and downward to an outer bottom position on the medial side of the bootie; and the second length of tape extends upward from an inner bottom position on the lateral side of the bootie, around the lip, and downward to an outer bottom position on the lateral side of the bootie (Fallon, “Preferably, the coupling member 215 is disposed on both the interior and exterior surfaces of the upper 105”; see figure 2 of Fallon, which shows that in order for the coupling member 215 to be on both the interior and exterior surfaces of the upper it would need to go around the lip; Examiner notes that the same would be necessary for the coupling member to cover the seams of Bell as modified by Lee on both sides).
Regarding claim 22, Bell discloses: An article of footwear including a heel region, a midfoot region and a forefoot region, the article of footwear comprising: a sole (130 and 140); and an upper connected to the sole, the upper and the sole forming a foot cavity, the upper comprising: an outer shell (200) extending from the heel region to the forefoot region, the outer shell including an outer heel wall (204), and a bootie (122) positioned within the outer shell and extending from the heel region to the forefoot region (see figure 2), the bootie connected to the outer shell along the sole along a sole connection (“foot stabilizer system 120 may be attached to base portion 130 at a central attachment portion 131 that extends substantially along longitudinal axis 20” paragraph 99; Examiner notes the foot stabilizer system 120 includes the bootie 122 and strap system 200 which also includes the heel counter 204; “central attachment portion 131, forefoot attachment portion 133, and/or heel attachment portion 135 securely attaches foot stabilizer system 120 to base portion 130 using stitching” paragraph 102) and floating freely relative to the outer shell above the sole connection within the heel region of the article of footwear (the attachment to the base as previously described is the only attachment, so it is understood that the bootie is “floating freely” relative to the outer shell above those connections in the heel area, insofar as claimed), the bootie including a hindfoot portion and a midfoot portion (see figure 2, the bootie extends through the hindfoot and midfoot areas), the bootie further including a mouth providing an opening into a foot cavity (128, “bootie 122 may include a throat hole or opening 128 for receiving a foot of a wearer” paragraph 85) with a lip extending around the mouth (the mouth necessarily has a lip, which is understood to be the rim or edge of the opening) and a heel cup arranged at a rear of the mouth in the hindfoot portion (the heel area of the bootie can be considered a heel cup), and wherein an entirety of the lip of the mouth is outside of the outer shell when the heel cup is in the upright position (see figure 2 of Bell showing the bootie in the upright position, the opening 128 is entirely outside of the outer shell in this position).
Bell does not explicitly disclose: at least one seam formed between the hindfoot portion and the midfoot portion; the heel cup configured to be moved between an upright position and a folded position, wherein at least one fold is formed in the lip of the mouth on a posterior side of the seam when the heel cup is in the folded position.
However, Lee teaches an upper for an article of footwear comprising at least one seam (“the folding material (30) is sewn and joined along the cut portion of the upper (20)” paragraph 17) between a hindfoot portion (30) and midfoot portion (midfoot portion of upper 20 that is anterior to the cut portion), the heel cup configured to be moved between an upright position (see figure 4 showing the heel cup in the upright position), and a folded position (see figure 5 showing the heel cup in the folded position), wherein at least one fold is formed in the lip of the mouth on a posterior side of the seam when the heel cup is in the folded position (see figure 3 annotated below). Lee also teaches a method to modify existing shoes to have the described structure (see paragraph 24).
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Lee teaches analogous art to the instant application in the field of footwear with pivotable heels. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to modify the bootie of Bell using the method taught by Lee to add a section of folding elastic material to the heel area of the shoe in order to improve the connection between the heel of the shoe and the user when the heel is worn upright (Lee, “when used as a shoe wrapping around the heel, the folding material tightly wraps around the heel, so that a shoe with a slipper function that does not easily come off can be obtained” paragraph 8), while also allowing easy slip-in when desired as the folding elastic material folds down easily when desired (Lee, “a curved boundary point is formed at the bottom of the folding material […] which makes it easy to transform into a slipper” paragraph 8). Additionally, this construction will preserve the integrity of the upper when the heel area is folded down, as described in paragraph 22 of Lee, as it is sewn particularly to allow smooth folding that will have a clean bend. See the annotated figure 2 of Bell provided with the 35 USC 103 rejection of claim 1 above showing the area that would be replaced by the “folding material” in the heel as described in Lee, and how the structure, in particular the mouth of the ankle opening, would be altered as a result.
Bell as modified does not explicitly disclose: a first length of tape covering the seam on a medial side of the bootie and providing a coupling between the hindfoot portion and the midfoot portion on the medial side of the bootie, the first length of tape extending upward from an inner bottom position on the medial side of the bootie, around the lip, and downward to an outer bottom position on the medial side of the bootie; and a second length of tape covering the seam on a lateral side of the bootie and providing a coupling between the hindfoot portion and the midfoot portion on the lateral side of the bootie, the second length of tape extending upward from an inner bottom position on the lateral side of the bootie, around the lip, and downward to an outer bottom position on the lateral side of the bootie.
However, Fallon teaches: a coupling member (215) for attaching pieces of an upper “the corresponding edges […] are stitched together, and the coupling member 215 (e.g., fabric tape) is applied such that the coupling member bridges the connection between the portions 205, 210, covering the stitching, Preferably, the coupling member 215 is disposed on both the interior and exterior surfaces of the upper 105. Heat is then applied to the coupling member 215 to seal the seam, fixing the member to the upper 105. With this configuration, the coupling member 215 provides a seamless connection that minimizes and/or eliminates the friction caused by conventional (exposed) seams. That is, a seamless connection is provided because the coupling member 215 creates a generally uninterrupted and/or continuous surface along the interior surface and/or exterior surface of the upper 105” (paragraphs 50-51).
Fallon teaches analogous art to the instant application in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to add the coupling member (215) as taught by Fallon to the inside and outside surfaces of the seams between the heel portion and the remainder of the bootie of Bell as modified by Lee in order to “[create] a generally uninterrupted and/or continuous surface along the interior surface and/or exterior surface of the upper” which will “[minimize] and/or [eliminate] the friction caused by conventional (exposed) seams” (paragraph 51). Further, it will reinforce the seam and further prevent it from potentially unraveling or becoming undone due to wear and tear. Examiner notes that as modified, the coupling member (fabric tape) as taught by Fallon is provided on the seam of Bell as modified by Lee, so there is a length of tape on the medial side and a length of tape on the lateral side.
Regarding claim 25, Bell as modified discloses: The article of footwear of claim 22 wherein the outer heel wall extends a first height above the sole and a posterior wall of the heel cup extends a second height above the sole, wherein the second height is at least two times the first height and less than four times the first height (see figure 2 of Bell provided with the 35 USC 103 rejection of claim 1 above showing the first height and second height; it is clear from the figure that the second (inner heel wall) height is at least two times and less than four times the first (outer heel wall) height).
Regarding claim 26, Bell as modified discloses: The article of footwear of claim 22 wherein a posterior wall of the heel cup is further positioned below an upper perimeter of the outer heel wall when the heel cup is in the folded position (as modified, the posterior wall of the inner heel cup can fold down completely, as taught by Lee, so it would be positioned below the upper perimeter of the outer heel wall (Bell, 204) when in the folded position).
Allowable Subject Matter
Claims 15-18 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Reasons for indicating allowable subject matter were presented in the Non-final Rejection mailed 9/11/2025.
Conclusion
THIS ACTION IS MADE FINAL. 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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/BRIANNA T. DUCKWORTH/Examiner, Art Unit 3732
/PATRICK J. LYNCH/Primary Examiner, Art Unit 3732