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 Amendments
The amendments filed with the written response received on 13 July 2026 have been considered and an action on the merits follows. As directed by the amendment, claim(s) 1 and 28 has/have been amended, claim(s) 6-13, 15, 18-26, 29, and 33 is/are canceled, and claim(s) 34-39 has/have been added. Accordingly, claim(s) 1-5, 14, 16-17, 27-28, 30-32, and 34-39 is/are pending in this application with an action on the merits to follow.
Claim Rejections - 35 USC § 112(b)
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 34-36 (and claims 37-39 at least for depending from a rejected claim) is/are 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 34, recites the limitation, “substantially equal.” It is unclear how one having ordinary skill in the art can ascertain how much the cross-sectional radius at the medial side can deviate from being equal to be considered “substantially equal”.
Claim 35, recites the limitation, “substantially cylindrical.” It is unclear how one having ordinary skill in the art can ascertain how much the plurality of first tubes can deviate from being cylindrical to be considered “substantially cylindrical”.
Claim 36, recites the limitation, “substantially rounded surface.” It is unclear how one having ordinary skill in the art can ascertain how much the surface can deviate from being rounded to be considered “substantially rounded”.
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) 1-5, 27-28, 30-32 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chan US 20210345729.
Regarding Independent Claim 1, Chan discloses an article of footwear (Figs. 1-9 #10) comprising: a heel region (Figs. 1-9 #16) including a posterior end of the article of footwear (Fig. 3 #10 far left end), a mid-foot region (Figs. 1-9 #14), and a forefoot region (Figs. 1-9 #12) including an anterior end of the article of footwear (Fig. 3 #10 far right end); a lateral side (Fig. 1 #24), and a medial side opposite the lateral side (Fig. 1 #22); an upper (Figs. 1-9 #200); and a sole structure coupled to the upper (Figs. 1-9 #100), wherein the sole structure includes: a first cushioning element (Figs. 1-9 #106 back half), comprising a plurality of first tubes (Figs. 1-9 #129b/128c/128f/128b) and a plurality of first web areas (Figs. 1-9 #124 rear half), wherein adjacent first tubes of the plurality of first tubes are connected to one another by a respective first web area of the plurality of first web areas (Figs. 1-6), wherein each of the tubes of the plurality of first tubes have a circular cross-sectional shape along a toe-to-heel direction (Fig. 6 shows circular cross-sections); and a unitary rubber outsole layer (Figs. 1-2 #104/112; ¶0005; as for “unitary”, structures #104/112 form one consistent structure and are thus unitary) forming a ground-engaging surface of the sole structure (¶0005, 0051, 0095), the unitary rubber outsole layer including a plurality of depressions (Figs. 1-8 show the curved depressed shape of the outsole #104 cupping the tubes), wherein each of the plurality of first tubes is received by one of the plurality of depressions (Figs. 1-8).
Regarding Claim 2, Chan discloses the article of footwear of claim 1, wherein one or more of the plurality of first tubes is a fluid-filled bladder (¶0002, 0005, 0054).
Regarding Claim 3, Chan discloses the article of footwear of claim 2, wherein at least one of the plurality of first tubes are fluidly separated (Fig. 24; ¶0072 “one or more of the chambers 128a-128f, 129a-129b may be fluidly isolated from one or more of the other chambers 128a-128f, 129a-129b”) from at least one other tube of the plurality of first tubes (¶0072).
Regarding Claim 4, Chan discloses the article of footwear of claim 2, wherein each of the plurality of first tubes is fluidly separated from each of the other tubes of the plurality of first tubes (Fig. 24; ¶0072, “one or more of the chambers 128a-128f, 129a-129b may be fluidly isolated from one or more of the other chambers 128a-128f, 129a-129b”).
Regarding Claim 5, Chan discloses the article of footwear of claim 1, wherein the plurality of first tubes are in fluid communication with one another (Fig. 6; ¶0072).
Regarding Claim 27, Chan discloses the article of footwear of claim 1 further comprising a coupling portion (Figs. 1-8 #112) extending between the heel region and the mid-foot region (Figs. 1-6), wherein the coupling portion includes a plurality of protrusions configured to be coupled with the plurality of first tubes (Figs. 6-8).
Regarding Claim 28, Chan discloses the article of footwear of claim 1, wherein one or more ridges (Fig. 3 #156a-g) are disposed between adjacent depressions of the plurality of depressions of the unitary rubber outsole layer (Fig. 6), wherein the one or more ridges include at least one notch (Fig. 3 #150/152/186) disposed on a top surface of the respective one or more ridges (Fig. 3 #178), and wherein the first web area is received by the at least one notch (Figs. 1-8; ¶0085).
Regarding Claim 30, Chan discloses the article of footwear of claim 1, wherein the sole structure includes: a second cushioning element (Figs. 1-9 #106 front half) comprising a plurality of second tubes (Figs. 1-9 #128e/128a/128d/129a) and a plurality of second web areas (Figs. 1-9 #124 front half), wherein adjacent second tubes of the plurality of second tubes are connected to one another by a respective second web area of the plurality of second web areas (Figs. 1-9), wherein each of the tubes of the plurality of second tubes have a circular cross-sectional shape along a toe-to-heel direction (Fig. 6).
Regarding Claim 31, Chan discloses the article of footwear of claim 30, wherein each of the plurality of second tubes is received by one of the plurality of depressions different from the plurality of depressions receiving each of the plurality of first tubes (Figs. 1-8 show the curved depressed shape of the outsole #104 cupping the tubes).
Regarding Claim 32, Chan discloses the article of footwear of claim 30, wherein the second cushioning element is a fluid-filled bladder (¶0002, 0005, 0054).
Claim(s) 1 and 34-36 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brown US 4782603.
Regarding Independent Claim 1, Brown discloses an article of footwear (Figs. 1-3 #10) comprising: a heel region (Figs. 1-3 #65) including a posterior end of the article of footwear (Figs. 1-2 #65 left end), a mid-foot region (Figs. 1-2 #65 middle), and a forefoot region (Figs. 1-2 #65 right end) including an anterior end of the article of footwear (Fig. 1-2 #55); a lateral side (Fig. 2 left side), and a medial side opposite the lateral side (Fig. 2 right side); an upper (Figs. 1-2 #20); and a sole structure coupled to the upper (Figs. 1-2 #40), wherein the sole structure includes: a first cushioning element (Figs. 1-3 #50/60), comprising a plurality of first tubes (Figs. 1-3 #60) and a plurality of first web areas (Figs. 1-3 #60), wherein adjacent first tubes of the plurality of first tubes are connected to one another by a respective first web area of the plurality of first web areas (Figs. 1-3 #70), wherein each of the tubes of the plurality of first tubes have a circular cross-sectional shape along a toe-to-heel direction (Fig. 1); and a unitary rubber outsole layer (Figs. 1-2 #70 is unitary; Col. 1:64-2-7) forming a ground-engaging surface of the sole structure (Col. 1:64-2:7), the unitary rubber outsole layer including a plurality of depressions (Figs. 1-2; Col. 1:64-2:7 notes the first tubes are between the layers, which would have depressions to fit the tubes), wherein each of the plurality of first tubes is received by one of the plurality of depressions (Col. 1:64-2:7).
Regarding Claim 34, Chan discloses the article of footwear of claim 1, wherein, for each of the plurality of first tubes, a cross-sectional radius at the medial side is substantially equal to a cross-sectional radius at the lateral side (Figs. 1-3).
Regarding Claim 35, Chan discloses the article of footwear of claim 34, wherein each of the plurality of first tubes is substantially cylindrical (Figs. 1-3).
Regarding Claim 36, Chan discloses the article of footwear of claim 35, wherein the medial side of each of the plurality of first tubes defines a medial face and the lateral side of each of the plurality of first tubes defines a lateral face (Figs. 1-3 show that the tubes have a lateral face), and wherein each of the medial face and the lateral face is a substantially rounded surface (Figs. 1-3 show that the tubes have a medial face).
Claim Rejections - 35 USC § 103
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.
Claim(s) 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chan as applied to claim 1 above, and further in view of Holt US 9510646.
Regarding Claim 16, Chan discloses the article of footwear of claim 1, but does not expressly disclose wherein the plurality of first tubes includes a first tube with a first pressure, a second tube with a second pressure, a third tube with a third pressure, and a fourth tube with a fourth pressure.
Holt teaches a sole with a cushioning element comprising tubes (Fig. 5 #132) wherein the plurality of first tubes includes a first tube with a first pressure, a second tube with a second pressure, a third tube with a third pressure, and a fourth tube with a fourth pressure (Col. 2:44-61 and Col. 10:1-11:32).
Both Chan and Holt teach analogous inventions in the art of soles with tubes. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Chan with the teachings of Holt such that the plurality of first tubes includes a first tube with a first pressure, a second tube with a second pressure, a third tube with a third pressure, and a fourth tube with a fourth pressure “to provide a desired amount of cushioning and support for different portions of a foot” (Holt Col. 10:1-5) and since the pressure within a fluid filled chamber in a footwear sole is a results effective variable with the results being the cushion and support provided to the wearer. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
Regarding Claim 17, the modified article of footwear of Chan discloses the article of footwear of claim 16, wherein pressures in the tubes are the same (¶0072) or different (¶0072), but does not expressly disclose wherein the first pressure and the third pressure are the same pressure, and wherein second pressure and the fourth pressure are the same pressure different from the pressure of the first pressure and the third pressure
Holt teaches a sole with a cushioning element comprising tubes (Fig. 5 #132) wherein the first pressure and the third pressure are the same pressure (Col. 10:1-41), and wherein second pressure and the fourth pressure are the same pressure different from the pressure of the first pressure and the third pressure (Col. 10:1-41).
Both Chan and Holt teach analogous inventions in the art of soles with tubes. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Chan with the teachings of Holt such that tubes would have the first pressure and the third pressure be the same pressure, and wherein the second pressure and the fourth pressure are the same pressure which are different from the pressure of the first pressure and the third pressure “to provide a desired amount of cushioning and support for different portions of a foot” (Holt Col. 10:1-5) and since the pressure within a fluid filled chamber in a footwear sole is a results effective variable with the results being the cushion and support provided to the wearer. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chan as applied to claim 1 above, and further in view of Bondie US 6122785.
Regarding Claim 14, Chan discloses the article of footwear of claim 1, but does not expressly disclose wherein the first cushioning element is a foam.
Bondie teaches a sole with a cushioning element comprising tubes (Fig. 4 #34) wherein the first cushioning element is a foam (Col. 3:30-35).
Both Chan and Bondie teach analogous inventions in the art of soles with tubes. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Chan with the teachings of Bondie such that tubes would be made of foam because, “foam, within both the air chambers and the interconnecting air passages, slows the flow of air between chambers. This regulation or restriction of the air flow from one chamber to the next, prevents the air chambers from deflating as quickly as air chambers in a pad with no restriction of the air flow between chambers” (Bondie Col. 1:56-67).
Allowable Subject Matter
Claim 37-39 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Response to Arguments
Applicant’s arguments, filed 13 July 2026, with respect to the 35 USC 102 rejection of claims 1-5 and 27-32 and 35 USC 103 rejection of claims 14 and 16-17 have been considered but are not persuasive.
Regarding claim 1, Applicant argues:
The addition of “unitary” to “rubber outsole layer” overcomes the prior art of record (Remarks Pg. 2)
The Examiner respectfully disagrees. Chan discloses a unitary rubber outsole in so much as the elements #104/112 form a singular structure that works as one unit, thus is unitary. See 35 USC 102 rejection above.
Applicant submits that the dependent claims are patentable based on their dependencies from claim(s) 1; however, as discussed in the rejection and in the arguments above, claim(s) 1 are not allowable over the prior art. Therefore, these arguments have not been found convincing and the rejections of the independent claims under 35 U.S.C. 102 and/or 103 have been maintained.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAQUEL M. WEIS whose telephone number is 571-272-6804. The examiner can normally be reached Mon-Fri: 0800-1700.
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/RAQUEL M. WEIS/Examiner, Art Unit 3732
/HEATHER MANGINE, Ph.D./Primary Examiner, Art Unit 3732
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