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 .
Election/Restrictions
As detailed on page 2 of the Non-Final Rejection mailed February 14, 2025, the disclosure of the instant application is arranged in such a manner as to preclude an orderly election of species despite distinct species being disclosed. As such, it was noted that claims 1-20 filed October 19, 2023 were treated as an election by original presentation and that any future amendments believed to be directed to embodiments not claimed in claims 1-20 filed October 19, 2023 would be withdrawn from further consideration. Newly submitted claim 21 appears to be directed to an invention that is independent or distinct from the invention originally claimed in claims 1-20 filed October 19, 2023 because newly submitted claim 21 appears directed to the heel clip depicted in Figure 19, with Figure 19 being “an alternate embodiment” of the heel clip depicted in Figure 4C (see Figures 4C and 19 and paras. 0038 and 0128 of the instant disclosure). Since Applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. As such, newly submitted claim 21 is withdrawn from further consideration. However, claim 21 remains eligible for future rejoinder, as applicable.
Response to Arguments
In view of Applicant’s amendment, the search has been updated and new prior art has been identified and applied. Applicant’s arguments, which appear to be drawn only to the newly amended limitations and previously presented rejections, have been considered but are moot in view of the new grounds of rejection.
Allowable Subject Matter
Claims 2-16 and 20 are 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.
Claim Rejections - 35 USC § 102
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPN 1,494,236 Greathouse.
To claim 1, Greathouse discloses an article of footwear (see Figures 1-5, reproduced below for convenience; pg. 1, lines 54-105), comprising:
an upper (annotated Figure 1, see below);
a heel region including a posterior end of the article of footwear (see Figure 1), a mid-foot region (see Figure 1), a forefoot region including an anterior end of the article of footwear (not depicted), a medial side, and a lateral side (see Figure 1);
a sole structure coupled to the upper (annotated Figure 1), the sole structure comprising:
a midsole having an outer side surface (see Figure 1), the midsole comprising:
a first cushioning element extending from the posterior end toward the anterior end (annotated Figure 1); and
a heel clip (1,2) extending from a first end on the medial side to a second end on the lateral side (see Figures 1-5; pg. 1, lines 54-105), the heel clip including:
an outer surface (see Figures 1-5; pg. 1, lines 54-105);
an inner surface (see Figures 1-5; pg. 1, lines 54-105);
a base (1) extending from a first end to a second end (see especially Figures 1-2; pg. 1, lines 54-105) and the base including a bottom surface, the base including a first protrusion (annotated Figures 2-3, see below) disposed at the first end of the heel clip and a second protrusion (annotated Figures 2-3, see below) disposed at the second end of the heel clip, each of the first protrusion and the second protrusion curving in a direction away from the base toward a ground surface and away from the upper (see Figures 1-3; pg. 1, lines 54-105); and
a support (2), wherein the base and the support together form the outer surface of the heel clip (see especially Figures 1-2; pg. 1, lines 54-105), wherein the heel clip surrounds at least a portion of the first cushioning element (see Figure 1; pg. 1, lines 54-105; inasmuch as currently claimed, at least support 2 of heel clip 1,2, which is disposed laterally outward of the first cushioning element is considered to surround at least a portion of the first cushioning element).
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Claims 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pub No. 2021/0145118 Campos, II et al.
To claim 17, Campos discloses an article of footwear (10) (see Figures 1-13; paras. 0040-0094), the article of footwear comprising:
a heel region (16) including a posterior end (20) of the article of footwear, a mid-foot region (14), and a forefoot region (12) including an anterior end (18) of the article of footwear (see especially Figure 1; para. 0040);
a midsole having an outer side surface (see especially Figure 2; para. 0042), the midsole comprising:
a first cushioning element (108) extending from the posterior end toward the anterior end (see especially Figure 2; para. 0042); and
a heel clip (110) extending from a first end on a medial side (24) to a second end on a lateral side (22) (see especially Figure 2; paras. 0042, 0092), the heel clip including:
an outer surface (see especially Figure 2; paras. 0042, 0092);
an inner surface (see especially Figure 2; paras. 0042, 0092);
a base (annotated Figure 2, see below; paras. 0042, 0092) extending from a first end to a second end and the base including a bottom surface, wherein the bottom surface includes one or more protruding portions, the one or more protruding portions (197a,197b) disposed in a plane that is offset from a plane of the bottom surface of the base (as depicted in Figure 2, the one or more protruding portions 197a,197b are disposed on planes offset in a horizontal direction from planes of the bottom surface of the base due to the inward horizontal extension of one or more protruding portions 197a,197b relative to the bottom surface of the base); and
a support (annotated Figure 2), wherein the base and the support together form the outer surface of the heel clip, wherein the heel clip surrounds at least a portion of the first cushioning element proximate the posterior end of the article of footwear (see Figure 1 and annotated Figure 2; paras. 0042, 0092).
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To claim 18, Campos further discloses an article of footwear further comprising:
a fluid-filled bladder (106) disposed in the heel region (see Figure 2; paras. 0042-0043);
a heel wrap (200) disposed in the heel region, the heel wrap disposed adjacent to the outer surface of the heel clip, and the heel wrap coupled to one or more engagement areas of the first cushioning element (see Figure 2; para. 0040; inasmuch as currently claimed, upper 200 is considered to be a “heel wrap” because posterior portions of upper 200 are configured to wrap around the heel of a wearer),
wherein the fluid-filled bladder is coupled to the bottom surface of the heel clip (see Figures 1-2; paras. 0042-0043 and 0092).
To claim 19, Campos further discloses an article of footwear the heel clip further including:
a recess disposed between the support and the base within the outer surface of the heel clip (annotated Figure 2), and a receiving area disposed between the support and the base on the inner surface of the heel clip (annotated Figure 2),
wherein the heel wrap is coupled to the outer surface of the heel clip, and wherein the heel clip is coupled to the first cushioning element via the receiving area (see Figures 1 and annotated Figure 2; paras. 0040, 0042-0043, and 0092; it is respectfully noted that the term “coupled” is very broad as per para. 0068 of the instant specification).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRIFFIN HALL whose telephone number is (571)270-0546. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alissa Tompkins can be reached at (571) 272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/F Griffin Hall/Primary Examiner, Art Unit 3732
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