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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “a traction element at the peak of the first or second parabolic arc with a lengthened height in relation to each of the other traction elements in the first or second set of traction elements” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 27 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 27 is rejected because of the limitations “the first or second set of traction elements comprises a traction element at the peak of the first or second parabolic arc with a lengthened height in relation to each of the other traction elements in the first or second set of traction elements” lacks support in the original specification which filed 09-27-2023; therefore such lack of detailed support in the original disclosure constitutes new matter.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 27 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 27 is rejected because of the limitations “the first or second set of traction elements comprises a traction element at the peak of the first or second parabolic arc with a lengthened height in relation to each of the other traction elements in the first or second set of traction elements”. It is not clear how to interpret this limitation since such as does applicant try to claim that the traction element is higher than all the other (if this is correct that would be a new matter issue)? Or applicant just simply says the traction element having a height. In addition, is this another traction element having another maximum height beside the first and second maximum heights.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3-4, 7-11, 15, 17, 19-20, and 26 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Swegle et al. (2016/0000183).
Regarding claim 1, Swegle discloses an article of footwear, comprising: an upper (para 0010, any shoe must have an upper); an outsole comprising a plurality of pivot points including a front toe pivot point, a heel pivot point, and a forefoot pivot point located between the front toe pivot point and the heel pivot point, wherein the plurality of pivot points corresponds to a plurality of locations on the outsole about which the article of footwear is configured to rotate while contacting a ground surface (fig 4); a midsole (para 0048), and
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a plurality of traction elements comprising a first set of traction elements extending between the heel pivot point and the forefoot pivot point and a second set of traction elements extending between the forefoot pivot point and the front toe pivot point (fig 1A),
the first set of traction elements having different heights ranging from a first minimum height at or near the heel and forefoot pivot points to a first maximum height at or near a first midpoint between the heel and forefoot pivot points, wherein all of the traction elements in the first set of traction elements extend away from the outsole to a first plurality of points that lie along a first parabolic arc extending from the heel pivot point to the forefoot pivot point, the first plurality of points positioned at a first plurality of distances from the outsole, the first plurality of distances corresponding to the different heights of the first set of traction elements, wherein the first maximum height corresponds to a peak of the first parabolic arc, and wherein the first minimum height corresponds to one or more ends of the first parabolic arc (fig 1A-1B, member 15, any two different height of point make a parabolic and the minimum height is the start point and the maximum is the return point), and
the second set of traction elements having different heights ranging from a second minimum height at or near the forefoot and front toe pivot points to a second maximum height at or near a second midpoint between the forefoot and front toe pivot points, wherein all of the traction elements in the second set of traction elements extend away from the outsole to a second plurality of points that lie along a second parabolic arc extending from the forefoot pivot point to the front toe pivot point, the second plurality of points positioned at a second plurality of distances from the outsole, the second plurality of distances corresponding to the different heights of the second set of traction elements, wherein the second maximum height corresponds to a peak of the second parabolic arc, and wherein the second minimum height corresponds to one or more ends of the second parabolic arc (figs 1A-1B, member 16, any two different height of point make a parabolic, and the minimum height is the start point and the maximum is the return point)
wherein the first set of traction elements comprises a first traction element and a second traction element positioned at the one or more ends of the first parabolic arc and a third traction element positioned at the first midpoint, wherein the first traction element and the second traction element have a low height, and wherein the third traction element has a high height that is greater than the low height (1.5 mm height vs 3mm height).
Regarding claim 3, Swegle discloses the first set of traction elements comprises one or more additional traction elements positioned between the first or second traction element and the third traction element, the one or more additional traction elements having a medium height that is greater than the low height and less than the high height (fig 1B annotated above).
Regarding claim 4, Swegle discloses the second set of traction elements comprises a lengthened traction element positioned at the second midpoint, the lengthened traction element having a medium height that is greater than the low height and less than the high height (fig 1B annotated above).
Regarding claim 5, Swegle discloses the second set of traction elements comprises one or more additional traction elements positioned between the lengthened traction element and the one or more ends of the second parabolic arc, the one or more additional traction elements having a height that is greater than the low height and less than the medium height (fig 1B annotated above).
Regarding claim 7, Swegle discloses a height of the first set of traction elements gradually increases from the heel and forefoot pivot points to the first midpoint between the heel and forefoot pivot points (fig 1B annotated above).
Regarding claim 8, Swegle discloses a height of the second set of traction elements gradually increases from the forefoot and front toe pivot points to the second midpoint between the forefoot and front toe pivot points (fig 1B annotated above).
Regarding claim 9, Swegle discloses a height of the first set of traction elements gradually decreases from the first midpoint to the heel and forefoot pivot points (fig 1B annotated above).
Regarding claim 10, Swegle discloses a height of the second set of traction elements gradually decreases from the second midpoint to the forefoot and front toe pivot points (fig 1B annotated above).
Regarding claim 11, Swegle discloses each traction element between the peak of the first or second parabolic arc and the one or more ends of the first or second parabolic arc has a different height depending on a distance between each traction element and the peak or the one or more ends of the first or second parabolic arc (fig 1B annotated above).
Regarding claim 15, Swegle discloses the first set of traction elements and the second set of traction elements are separated or spaced apart by one or more flat or substantially flat regions (fig 1B annotated above).
Regarding claim 17, Swegle discloses the outsole comprises a central portion and a peripheral portion extending around the central portion, wherein the peripheral portion includes the first and second sets of traction elements, and wherein the central portion includes one or more flat surface areas that do not include any traction elements (figs 1B annotated above and 4).
Regarding claim 19, Swegle discloses the first set of traction elements and the second set of traction elements include a combination of different types of traction elements (fig 1B annotated above and 2).
Regarding claim 20, Swegle discloses the plurality of traction elements comprise a rubber material and a thermoplastic polyurethane (TPU) material (para 0047).
Regarding claim 26, Swegle discloses the first maximum height is greater- different than the second maximum height (fig 1B annotated above).
Response to Arguments
Applicant’s arguments, dated 01-20-2026, with respect to the rejection of claims under 35 U.S.C §112(a) and §112(b) have been fully considered, and are persuasive. The rejection to the claims has been withdrawn due to the amendments to the claims.
Applicant's arguments, date 01-20-2026, with respect to the rejections of claims under 35 U.S.C §102 have been fully considered, but they are not persuasive.
Argument 1: applicant argues that “Swegle does not disclose a first set of traction elements with a first maximum height at or near a first midpoint between the heel and forefoot pivot points. The traction element labeled as having a "first maximum" height is clearly shorter than the traction element immediately adjacent to it on the right side, and thus cannot have a maximum height within the set of traction elements in the leftmost circle. The "first maximum" height is also clearly in the heel region and nowhere near a midpoint between the heel and forefoot pivot points”. However, the examiner respectfully disagree since it is not very clear where is the specific location (it just needs to be near and how far away is near) which is near the first midpoint between the heel and forefoot pivot points. In addition, the term “first maximum height” does not mean it is the highest because it maximum is the height then how can we have a second maximum.
Argument 2: applicant argues that “Swegle also fails to disclose a second set of traction elements with a second maximum height at or near a second midpoint between the forefoot and front toe pivot points. Like the "first maximum" height, the "second maximum" height is in the heel region and nowhere near a midpoint between the forefoot and front toe pivot points”. However, the examiner respectfully disagree since it is not very clear where is the specific location (it just needs to be near and how far away is near) which is near the second midpoint between the heel and forefoot pivot points. In addition, the term “second maximum height” does not mean it is the highest because it maximum is the height then how can we have a first maximum.
Argument 3: applicant argues that the prior art does not teach about the parabolic arc equation. However, the examiner respectfully disagrees since any arc will have its own equation. In addition, the claims or even the specification require that all the traction elements are on the parabolic.
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 BAO-THIEU L NGUYEN whose telephone number is (571)270-0476. The examiner can normally be reached M-F 7am-3pm.
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BAO-THIEU L. NGUYEN
Primary Examiner
Art Unit 3732
/BAO-THIEU L NGUYEN/ Primary Examiner, Art Unit 3732