DETAILED ACTION
This office action is in response to the amendment filed March 5, 2026 in which claims 1, 3-6, 8, 10-11, 13-15, and 17-32 are presented for examination and claims 2, 7, 9, 12, and 16 are canceled.
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 .
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.
Claim 20 is 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.
Claim 20 recites the limitation “wherein the outsole layer is of a unitary construction” (lines 1-2). In view of current amendments to claim 1 which recite “a rubber outsole layer formed as a unitary construction” (claim 1, line 13), claim 20 fails to further limit the subject matter of claim 1, from which claim 20 depends.
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 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.
Claims 1, 3-6, 8, 10-11, 13-15, 17-22, 25-28, and 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub No. 2021/0345729 Chan.
To claim 1, Chan discloses an article of footwear (10) (see Figures 1-9; paras. 0049-0096) 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 Figure 1; para. 0049);
an upper (200) extending from the heel region to the forefoot region (see Figure 1; para. 0049);
a sole structure (100), the sole structure coupled to the upper, and wherein the sole structure further comprises (see Figures 1-9; para. 0051);
a first cushioning element (106), the first cushioning element including a first tube (129a), a second tube (128d), a third tube (128a), and a fourth tube (128e) (see Figures 1-9; para. 0064), wherein a first web area (124) extends between and connects the first tube and the second tube (see for example Figures 3 and 9; paras. 0063-0065), a second web area (124) extends between and connects the second tube and the third tube (see for example Figures 3 and 9; paras. 0063-0065), and a third web area (124) extends between and connects the third tube and the fourth tube (see for example Figures 3 and 9; paras. 0063-0065; it is respectfully noted that the term “area” is very broad and that the claim does not recite, for example, that the first, second, and third web areas are separate and distinct web areas); and
a rubber outsole layer (104) (para. 0005) extending from the posterior end to the anterior end (see Figures 1 and 3-6; paras. 0005, 0095), the outsole layer configured to directly receive a portion of the first cushioning element, wherein the outsole layer forms a ground-contacting surface of the article of footwear (see Figures 1 and 3-6; paras. 0005, 0095).
Rubber outsole layer (104) of article of footwear (10) in the embodiment of Chan depicted in Figures 1-9 is not explicitly disclosed as being formed of a unitary construction and extending from the posterior end to the anterior end.
However, Chan further teaches an article of footwear (10a) (see Figures 10-19; paras. 0097-0113) comprising a rubber outsole layer (104a) formed of a unitary construction and extending from the posterior end to the anterior end (see Figures 10-13 and 15; para. 0113).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure rubber outsole layer (104) of article of footwear (10) of Chan to be a unitary construction and extending from the posterior end to the anterior end as taught by article of footwear (10a) of Chan to provide increased durability and resiliency to article of footwear (10). It would further have been obvious to one of ordinary skill in the art that unitary outsole layer (104a), which extends from the posterior end to the anterior end would provide additional protection to the cushioning element compared to discontinuous outsole layer (104).
To the limitation that the rubber outsole layer is formed as a “unitary structure,” it is respectfully noted that it has been held that forming in one piece an article that has formerly been formed in two pieces and put together involves only routine skill in the art (see MPEP 2144.04).
To claim 3, Chan further teaches an article of footwear wherein the sole structure further includes:
a second cushioning element (see Figures 1-9; para. 0064), the second element including a first tube (128b), a second tube (128f), a third tube (128c), and a fourth tube (129b) (see Figures 1-9; para. 0064; it is respectfully noted that the claim does not recite, for example, that the second cushioning element is a separate and distinct element from the first cushioning element).
To claim 4, Chan further teaches an article of footwear wherein the first cushioning element is disposed in the forefoot region, and wherein the second cushioning element is disposed in the heel region (see Figures 1-9; para. 0064).
To claim 5, Chan further teaches an article of footwear wherein the outsole layer includes a first engagement area (top surfaces of 198a-198d) disposed at an anterior portion of the outsole layer adjacent the anterior end, and wherein the outsole layer includes a second engagement area (top surfaces of 198e-198h) at a posterior portion of the outsole layer adjacent the posterior end (see especially Figure 3; para. 0095).
To claim 6, Chan further teaches an article of footwear wherein the first engagement area includes one or more depressions, wherein the one or more depressions include a first depression, a second depression, a third depression, and a fourth depression (see especially Figures 3 and 6 depicting the respective depressions in the top surfaces of 198a-198d; para. 0095).
To claim 8, Chan further teaches an article of footwear wherein the first tube of the first cushioning element is directly coupled to the first depression (see especially Figures 3 and 6; para. 0095),
wherein the second tube of the first cushioning element is directly coupled to the second depression (see especially Figures 3 and 6; para. 0095),
wherein the third tube of the first cushioning element is directly coupled to the third depression (see especially Figures 3 and 6; para. 0095), and
wherein the fourth tube of the first cushioning element is directly coupled to the fourth depression (see especially Figures 3 and 6; para. 0095), and
wherein each of the first tube, the second tube, the third tube, and the fourth tube of the first cushioning element are directly coupled to the first depression, the second depression, the third depression, and the fourth depression of the first engagement area, respectively, such that no space is disposed between the first cushioning element and the first engagement area (see especially Figures 3 and 6; para. 0095).
To claim 10, Chan further teaches an article of footwear wherein the second engagement area includes one or more ridges (156d-156g) and one or more depressions (top surfaces of 198e-198h), the one or more depressions is disposed between adjacent ridges of the one or more ridges (see especially Figures 3-4; paras. 0085, 0095), wherein the one or more ridges include a first ridge, a second ridge, and a third ridge, and wherein the one or more depressions of the second engagement area includes a first depression, a second depression, a third depression, and a fourth depression (see especially Figures 3-4; paras. 0085, 0095).
To claim 11, Chan further teaches an article of footwear wherein the sole structure further includes:
a support element (110) coupled to the second engagement area, wherein the support element includes one or more recesses (172a-172h) that rest flush with the one or more depressions to form a receiving area (see especially Figures 3-4 and 6; paras. 0085, 0089, 0095).
To claim 13, Chan further teaches an article of footwear wherein the first tube of the second cushioning element is directly coupled to the first depression (see Figures 1-6; para. 0064, 0085, 0089, 0095),
wherein the second tube of the second cushioning element is directly coupled to the second depression (see Figures 1-6; para. 0064, 0085, 0089, 0095),
wherein the third tube of the second cushioning element is directly coupled to the third depression (see Figures 1-6; para. 0064, 0085, 0089, 0095), and
wherein the fourth tube of the second cushioning element is directly coupled to the fourth depression (see Figures 1-6; para. 0064, 0085, 0089, 0095).
To claim 14, Chan further teaches an article of footwear wherein the first engagement area includes a first set of one or more depressions (top surfaces of 198a-198d), and wherein the second engagement area includes a second set of one or more depressions (top surfaces of 198e-198h) (see especially Figures 3 and 6; para. 0095).
To claim 15, Chan further teaches an article of footwear wherein the first set of one or more depressions include a first depression (top surface of 198a), a second depression (top surface of 198b), a third depression (top surface of 198c), and a fourth depression (top surface of 198d), and wherein the second set of one or more depressions include a fifth depression (top surface of 198e), a sixth depression (top surface of 198f), a seventh depression (top surface of 198g), and an eighth depression (top surface of 198h), wherein the first tube of the first cushioning element is directly coupled to the first depression, wherein the second tube of the first cushioning element is directly coupled to the second depression, wherein the third tube of the first cushioning element is directly coupled to the third depression, wherein the fourth tube of the first cushioning element is directly coupled to the fourth depression, wherein the first tube of the second cushioning element is directly coupled to the fifth depression, wherein the second tube of the second cushioning element is directly coupled to the sixth depression, wherein the third tube of the second cushioning element is directly coupled to the seventh depression, and wherein the fourth tube of the second cushioning element is directly coupled to the eighth depression (see especially Figures 3-4 and 6; para. 0095).
To claim 17, Chan further teaches an article of footwear wherein the first cushioning element is a fluid-filled bladder, and wherein the second cushioning element is a foam material (para. 0073; portion 112 of the second cushioning element comprises a foam; it is respectfully noted that the claim does not recite, for example, that any of the tubes comprise a foam material).
To claim 18, Chan further teaches an article of footwear wherein the first cushioning element is a fluid-filled bladder, and wherein the second cushioning element is a fluid- filled bladder (para. 0061).
To claim 19, Chan further teaches an article of footwear wherein the first cushioning element is a foam material, and wherein the second cushioning element is a foam material (para. 0073; portion 112 of the first and second cushioning elements comprise a foam; it is respectfully noted that the claim does not recite, for example, that any of the tubes comprise a foam material).
To claim 20, Chan further teaches an article of footwear wherein the outsole layer is of a unitary construction (see Figures 10-13 and 15; para. 0113; outsole 104a).
To claim 21, Chan further teaches an article of footwear further comprising:
a midsole (110) extending from the posterior end to the anterior end, wherein the midsole includes a plurality of recesses (172a-172d) configured to receive an upper facing surface of the first cushioning element (see especially Figures 3-4 and 6; para. 0089).
To claim 22, Chan further teaches an article of footwear wherein an anterior portion of the midsole is configured to couple with an anterior end of the outsole layer (see Figures 1-6; para. 0051).
To claim 25, Chan further teaches an article of footwear wherein the outsole layer directly contacts the midsole at an anterior most portion of the midsole (see Figures 10-15).
To claim 26, Chan further teaches an article of footwear wherein each of the first tube, the second tube, the third tube, and the fourth tube of the first cushioning element are exposed at an outermost side surface of each of the respective tubes (see for example Figures 1-2 depicted portions of the tubes exposed).
To claim 27, Chan discloses an article of footwear (10) (see Figures 1-9; paras. 0049-0096) 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 Figure 1; para. 0049);
a sole structure (100), the sole structure coupled to an upper (200) of the article of footwear (see Figures 1-9; paras. 0049, 0051), and wherein the sole structure further comprises;
a first cushioning element disposed in the heel region, the first cushioning element including a first tube (128b), a second tube (128f), a third tube (128c), and a fourth tube (129b), wherein each of the first tube, the second tube, the third tube, and the fourth tube includes a depression formed on a top surface thereof (see Figures 1-9; para. 0064; paras. 0006, 0131; inasmuch as currently claimed, the tubes of the first cushioning element are configured to compress and would therefore be capable of forming a depression on top surfaces thereof under the weight of a wearer; it is respectfully noted that the claim does not recite, for example, that each of the first tube, the second tube, the third tube, and the fourth tube includes a depression formed on a top surface thereof in an at-rest or unloaded state);
a second cushioning element disposed in the forefoot region, the second cushioning element including a first tube (129a), a second tube (128d), a third tube (128a), and a fourth tube (128e) (see Figures 1-9; para. 0064; it is respectfully noted that the claim does not recite, for example, that the second cushioning element is a separate and distinct element from the first cushioning element); and
a rubber outsole layer (104) (para. 0005), the outsole layer configured to receive the first cushioning element and the second cushioning element (see Figures 1 and 3-6; paras. 0005, 0095),
wherein the first cushioning element and the second cushioning element are directly coupled to the outsole layer (see Figures 1 and 3-6; paras. 0005, 0095).
Rubber outsole layer (104) of article of footwear (10) in the embodiment of Chan depicted in Figures 1-9 is not explicitly disclosed as being formed of a unitary construction and extending from the posterior end to the anterior end.
However, Chan further teaches an article of footwear (10a) (see Figures 10-19; paras. 0097-0113) comprising a rubber outsole layer (104a) formed of a unitary construction and extending from the posterior end to the anterior end (see Figures 10-13 and 15; para. 0113).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure rubber outsole layer (104) of article of footwear (10) of Chan to be a unitary construction and extending from the posterior end to the anterior end as taught by article of footwear (10a) of Chan to provide increased durability and resiliency to article of footwear (10). It would further have been obvious to one of ordinary skill in the art that unitary outsole layer (104a), which extends from the posterior end to the anterior end would provide additional protection to the cushioning element compared to discontinuous outsole layer (104).
To the limitation that the rubber outsole layer is formed as a “unitary structure,” it is respectfully noted that it has been held that forming in one piece an article that has formerly been formed in two pieces and put together involves only routine skill in the art (see MPEP 2144.04).
To claim 28, Chan further teaches an article of footwear wherein the first tube is fluidly isolated from the second tube, the second tube is fluidly isolated from the third tube, and the third tube is fluidly isolated from the fourth tube (para. 0072; see also article of footwear 10a in Figures 10-19 and article of footwear 10b in Figures 20-24).
To claim 30, Chan further teaches an article of footwear wherein the second cushioning element includes a first web area (124) disposed between the first tube and the second tube, a second web area (124) disposed between the second tube and the third tube, and a third web area (124) disposed between the third tube and the fourth tube (see for example Figures 3 and 9; paras. 0063-0065; it is respectfully noted that the term “area” is very broad and that the claim does not recite, for example, that the first, second, and third web areas are separate and distinct web areas), the first web area having a first thickness, the second web area having a second thickness different from the first thickness, and the third web area having a third thickness different from each of the first thickness and the second thickness (see for example Figures 3 and 9; paras. 0063-0065; it is respectfully noted that the term “area” is very broad; as such, arbitrary portions, i.e., “areas” of web area 124 may be designated as the various “first web area,” “second web area,” and “third web area,” including areas having the claimed relative thicknesses; it is respectfully noted that the claim does not for example, that the first, second, and third web areas are separate and distinct web areas or that the claimed thicknesses extend from a top surface to a bottom surface of the respective web area).
To claim 31, Chan further teaches an article of footwear wherein the first ridge includes a first notch (186), the second ridge includes a second notch (186), and the third ridge includes a third notch (186), wherein each of the first notch, the second notch, and the third notch are aligned along a longitudinal axis of the article of footwear (see especially Figure 3; para. 0094).
To claim 32, Chan further teaches an article of footwear wherein the second cushioning element includes a first web area (124) extending between the first tube and the second tube, a second web area (124) extending between the second tube and the third tube, and a third web area (124) extending between the third tube and the fourth tube, the first web area coupled with the first notch, the second web area coupled with the second notch, and the third web area coupled with the third notch (see for example Figures 3 and 9; paras. 0063-0065, 0094; it is respectfully noted that the term “area” is very broad).
Claims 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Chan in view of USPN 10,709,199 Conway et al.
To claim 23, Chan discloses an article of footwear as recited in claims 1 and 21, above.
Chan does not explicitly disclose an article of footwear wherein the outsole layer directly contacts the midsole at a posterior most portion of the midsole.
However, Conway teaches an article of footwear comprising tubes (30) wherein an outsole layer (28) directly contacts a midsole (26) at a posterior most portion of the midsole (see for example Figures 1-3; col. 9, lines 14-34).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the article of footwear of Chan such that the outsole layer directly contacts the midsole at a posterior most portion of the midsole as taught by Conway because Conway teaches that this configuration is known in the art. It would further have been obvious to one of ordinary skill that encapsulating the tubes between the midsole and outsole as in Conway would provide additional protection for the tubes from puncturing.
To claim 24, Chan discloses an article of footwear as recited in claims 1 and 21, above.
Chan does not explicitly disclose an article of footwear wherein the outsole layer directly contacts the midsole in the mid-foot region.
However, Conway teaches an article of footwear comprising tubes (30) wherein an outsole layer (28) directly contacts a midsole (26) in the mid-foot region (see for example Figures 1-3; col. 9, lines 14-34).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the article of footwear of Chan such that the outsole layer directly contacts the midsole in the mid-foot region as taught by Conway because Conway teaches that this configuration is known in the art. It would further have been obvious to one of ordinary skill that encapsulating the tubes between the midsole and outsole as in Conway would provide additional protection for the tubes from puncturing.
Allowable Subject Matter
Claim 29 is 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.
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.
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.
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/F Griffin Hall/Primary Examiner, Art Unit 3732
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