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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on October 17, 2025 has been entered.
Response to Amendment
The amendments filed with the written response received on October 17, 2025 have been considered and an action on the merits follows. As directed by the amendment, claim 1 has been amended; claims 2, 3, 8 and 9 are canceled; claims 5, 6, 10-50 are withdrawn from further consideration; and claims 51-55 have been added. Accordingly, claims 1, 4-7 and 10-55 are pending in this application, with an action on the merits to follow regarding claims 1, 4, 7 and 51-55.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: amended claim 1 recites “wherein the flexible lower shank … does not pass through the void space” and new claim 51 recites “wherein the flexible lower shank does not pass through the void space”. This language is not recited anywhere in the written Specification.
Claim Objections
Claims 1, 4, 51 and 53-55 are objected to because of the following informalities:
Claim 1, line 6: the phrase “of the lower midsole” should be added after “a heel region”
Claim 1, line 16: the language would be clearer if the phrase “configured to be” is deleted
Claim 1, line 18: the comma after “wherein” should be deleted
Claim 1, line 19: the language would be clearer if the phrase “configured to be” is deleted
Claim 1, lines 14-15 (see the 35 U.S.C. 112(a) rejection section below): the claim would be clearer if “wherein the flexible lower shank abuts the lower midsole and does not pass through the void space” were recited as “wherein the flexible lower shank abuts the lower midsole and is separated from the void space by the lower midsole”
Claim 1, line 18: the comma after “wherein” should be deleted
Claim 4, line 1: the comma after “wherein” should be deleted
Claim 51, line 12 (see the 35 U.S.C. 112(a) rejection section below): the claim would be clearer if “wherein the flexible lower shank does not pass through the void space” were recited as “wherein the flexible lower shank is separated from the void space by the lower midsole”
Claim 53, line 1: the comma after “wherein” should be deleted
Claim 53, line 2: the language would be clearer if the phrase “configured to be” is deleted
Claim 54, line 1: the comma after “wherein” should be deleted
Claim 54, line 2: the claim would be clearer if “the lower midsole” were amended to recite “the [[lower]] midsole assembly above the lower midsole”
Claim 55, line 2: the phrase “of the lower midsole” should be added after “a heel region”
Claim 55, line 2: the end of the claim should end with a period instead of a semicolon
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1 and 51 (and claims 4, 7 and 52-55 at least due to dependency from either of independent claims 1 or 51) are 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.
Regarding claims 1 and 51, Applicant recites that the flexible lower shank “does not pass through the void space”. This is a negative limitation that does not have support in the originally-filed disclosure. While the drawings may be in agreement with this language, the drawings cannot be relied upon for a negative limitation that prohibits certain aspects of the claimed subject matter without explicit support in the originally-filed written disclosure. Correction is required. Examiner suggests reciting the language in an alternative manner, such as “wherein the flexible shank is separated from the void space by the lower midsole” for example.
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.
Claims 1 and 51 (and claims 4, 7 and 52-55 at least due to dependency from either of independent claims 1 or 51) 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.
Regarding claim 1, Applicant recites “wherein the void space includes a concave upper surface formed in the upper midsole and a concave lower surface formed in the lower midsole” (emphasis added). Based on the disclosure, this language is confusing because the void space’s upper boundary is defined by the flexible upper shank, not the upper midsole (see elected Figs. 4 and 6). Also, it is unclear how a void space has a surface. Rather, the structure that defines the void space would be better understood to have the surfaces that define the void space. Correction is required. One remedy would involve the following amended language: “wherein the void space [[includes]] is defined by a concave [[upper]] lower surface portion formed in the flexible upper shank and a concave [[lower]] upper surface portion formed in the lower midsole”.
Further regarding claim 1, Applicant recites “wherein the flexible upper shank abuts the upper midsole and has a concave portion that conforms with the concave upper surface of the upper midsole” (emphasis added). As best as can be understood from the disclosure, the flexible upper shank has a convex portion that conforms with a concave lower surface portion of the upper midsole (see Fig. 4). Correction is required. One remedy (in conjunction with the immediately preceding paragraph’s suggestion) would involve the following amended language: “wherein the flexible upper shank abuts the upper midsole and has a [[concave]] convex portion that conforms with the concave [[upper]] lower surface portion of the upper midsole”.
Regarding claim 51, Applicant recites “wherein the void space includes a concave upper surface formed in the upper midsole and a concave lower surface formed in the lower midsole” (emphasis added). Based on the disclosure, this language is confusing because the void space’s upper boundary is defined by the flexible upper shank, not the upper midsole (see elected Figs. 4 and 6). Also, it is unclear how a void space has a surface. Rather, the structure that defines the void space would be better understood to have the surfaces that define the void space. Correction is required. One remedy would involve the following amended language: “wherein the void space [[includes]] is defined by a concave [[upper]] lower surface portion formed in the flexible upper shank and a concave [[lower]] upper surface portion formed in the lower midsole”.
Further regarding claim 51, Applicant recites “wherein the flexible upper shank includes a concave portion that abuts the concave portion of the upper midsole” (emphasis added). As best as can be understood from the disclosure, the flexible upper shank has a convex portion that conforms with a concave lower surface portion of the upper midsole (see Fig. 4). Correction is required. One remedy (in conjunction with the immediately preceding paragraph’s suggestion) would involve the following amended language: “wherein the flexible upper shank includes a [[concave]] convex portion that abuts the concave lower surface portion of the upper midsole”.
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.
Claims 1, 4, 7 and 51-55, as best as can be understood, are rejected under 35 U.S.C. 103 as being unpatentable over Crowley (USPN 4,881,329) in view of Pascual et al. (hereinafter “Pascual”) (USPN 6,368,989).
Regarding independent claim 1, Crowley discloses a midsole assembly (sole #16) for an athletic shoe (#15; Fig. 1 of Crowley; Examiner notes that the phrase “for an athletic shoe” does not further structurally define the midsole assembly in any patentably-distinguishing sense), the midsole assembly comprising: an upper midsole (upper midsole half #28), a lower midsole (lower midsole half #29), a flexible upper shank (spring #35 can deflect to cushion the foot in use (Col. 1, Lines 35-39 of Crowley)), a flexible lower shank (outsole #21 is a flexible lower shank, inasmuch as the flexible lower shank has been defined, structurally, in the claim; outsole can be rubber or other conventional materials (Col. 2, Lines 22-23 of Crowley)) and a void space (spring chamber #36 is a void space defined between lateral openings #45); wherein the flexible upper shank and the flexible lower shank each extend from a heel region to a forefoot region of the lower midsole (see annotated Fig. 1 below and Fig. 2, which shows that spring #35 (i.e. flexible upper shank) fills the space of the spring chamber #36 (i.e. void space) in Fig. 2; annotated Fig. 1 shows arbitrary heel and forefoot regions of the lower midsole; Examiner notes that the term "region" is very broad and merely means "any large, indefinite, and continuous part of a surface or space" (Defn. No. 1 of "Collins English Dictionary – Complete and Unabridged, 12th Edition 2014" entry via TheFreeDictionary.com); Examiner notes that the identified boundary between the heel region and the forefoot region could be located in a different spot than shown, given the breadth of the term “region” with no additional structural boundary criteria recited in the claim); wherein the void space includes a concave upper surface formed in the upper midsole and a concave lower surface formed in the lower midsole (see Fig. 1; a concave surface is formed in the upper midsole half #28 (labeled in Fig. 7) and a concave surface is formed in the lower midsole half #29 (labeled in Fig. 7)); wherein the lower midsole is disposed between the flexible upper shank and the flexible lower shank (see Fig. 7, which shows lower midsole half #29 (i.e. lower midsole) as being disposed in a location that is between the outsole #21 (i.e. flexible lower shank) and the space where the spring #35 would be located (i.e. where #45 is pointing)); wherein the flexible upper shank abuts the upper midsole (with the spring #35 disposed in the spring chamber #36, the spring’s upper surface #37 abuts with the lower surface of the concavity of the upper midsole half #28) and has a concave portion that conforms with the concave upper surface of the upper midsole (Fig. 2; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)); wherein the flexible lower shank abuts the lower midsole and does not pass through the void space (Fig. 1 shows how outsole #21 abuts the lower midsole half #29 on its lower side (see labeled in Fig. 7; unlabeled lower midsole half shown in conjunction with outsole #21 in Fig. 1)). Crowley is silent to the relative stiffnesses of the outsole (i.e. flexible lower shank), the spring #35 (i.e. flexible upper shank) and the lower midsole half #29 (i.e. lower midsole), and it cannot be determined whether the flexible lower shank is configured to be stiffer than the flexible upper shank; and wherein the flexible upper shank and the flexible lower shank are both configured to be stiffer than the lower midsole.
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Pascual teaches a puncture resistant composite for use in footwear soles (Col. 1, Lines 33-34 of Pascual). The composite adds a benefit to footwear to cause the footwear sole to be impervious to puncture from beneath by nails, thorns and the like (Col. 1, Lines 48-49 of Pascual). Pascual teaches that the composite layer can be placed anywhere in the sole of the footwear, including between the outsole and the midsole (Col. 5, Lines 18-21 of Pascual). Pascual teaches that the composite can be tailored to have directional stiffness in desired orientations depending on the end use, or alternatively to have general stiffness with no regard to the directionality (Col. 3, Line 53 through Col. 4, Line 5 of Pascual).
Crowley and Pascual teach analogous inventions in the field of footwear soles. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have added a puncture resistant composite layer in between the outsole #21 and the lower midsole half #29 in order to prevent nails, thorns, or the like from penetrating through the sole of the shoe, as taught by Pascual, wherein, post-modification, the composite layer would serve as the “flexible lower shank” and outsole #21 would serve as an outsole for the shoe. While relative stiffnesses are not explicitly detailed in the prior art, it would have been further obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art for the puncture resistant composite layer to have had a higher stiffness (while still having at least some degree of flexibility) than the spring #35 (i.e. flexible upper shank) since the spring #35 is intended to deflect during use, while the composite layer is intended to be at least stiff enough for nails to pass therethrough, if stepped on by the user. It would have been further obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art for both the spring and the composite layer to have been stiffer than the upper and lower midsole halves #28/29 (i.e. including the lower midsole) since the midsole #22 is described as being a more resilient material, such as polyurethane (Col. 2, Lines 24-25 of Crowley), wherein a puncture-resistant composite layer would be reasonably expected to be stiffer than a resilient polyurethane material layer, and a spring material (which has “good hardness and energy storing capability”; Col. 2, Lines 59-65) would be reasonably expected to be stiffer than a resilient polyurethane material layer.
Regarding claim 4, the modified midsole assembly of Crowley (i.e. Crowley in view of Pascual, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that the flexible upper shank is configured to flex between the upper midsole and the lower midsole during walking or running (“lightweight yet durable spring for an athletic shoe which can deflect substantially to cushion the foot but which will store and return energy to the foot”; Col. 1, Lines 35-40).
Regarding claim 7, the modified midsole assembly of Crowley (i.e. Crowley in view of Pascual, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that it further includes an outsole disposed below the flexible lower shank (as noted above, post-modification, the added composite layer serves as the flexible lower shank and the outsole #21 serves as an outsole, for purposes of addressing the claim).
Regarding independent claim 51, the modified midsole assembly of Crowley (i.e. Crowley in view of Pascual, as such modification is described and applied to independent claim 1 above) renders obvious a midsole assembly (sole #16) for an athletic shoe (#15; Fig. 1 of Crowley; Examiner notes that the phrase “for an athletic shoe” does not further structurally define the midsole assembly in any patentably-distinguishing sense), the midsole assembly comprising: an upper midsole (upper midsole half #28), a lower midsole (lower midsole half #29), a flexible upper shank (spring #35 can deflect to cushion the foot in use (Col. 1, Lines 35-39 of Crowley)), a flexible lower shank (post-modification, the added composite layer (incorporated from the teachings of Pascual into the sole of Crowley) serves as the flexible lower shank) and a void space (spring chamber #36 is a void space defined between lateral openings #45); wherein the void space includes a concave upper surface formed in the upper midsole and a concave lower surface formed in the lower midsole (see Fig. 1; a concave surface is formed in the upper midsole half #28 (labeled in Fig. 7) and a concave surface is formed in the lower midsole half #29 (labeled in Fig. 7)); wherein the lower midsole is disposed between the flexible upper shank and the flexible lower shank (see Fig. 7, which shows lower midsole half #29 (i.e. lower midsole) as being disposed in a location that is between the outsole #21 and the space where the spring #35 would be located (i.e. where #45 is pointing); post-modification, the added composite puncture-resistant layer from Pascual into Crowley is disposed between the lower midsole half and the outsole #21, so the lower midsole half #29 would be disposed between the spring #35 (i.e. flexible upper shank) and the composite layer (i.e. flexible lower shank)); wherein the flexible upper shank includes a concave portion that abuts the concave portion of the upper midsole (Fig. 2 of Crowley; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)); wherein the flexible lower shank is stiffer than the flexible upper shank (as explained in the 35 U.S.C. 103 rejection of independent claim 1 above); and wherein the flexible lower shank does not pass through the void space (Fig. 1 shows how outsole #21 abuts the lower midsole half #29 on its lower side; the added composite layer is positioned between the outsole and the lower midsole half, so it does not pass through the void space).
Regarding claim 52, the modified midsole assembly of Crowley (i.e. Crowley in view of Pascual, as applied to claim 51 above) renders obvious all the limitations of claim 51, as set forth above, and further that it further includes an outsole disposed below the flexible lower shank (as noted above, post-modification, the added composite layer serves as the flexible lower shank and the outsole #21 serves as an outsole, for purposes of addressing the claim).
Regarding claim 53, the modified midsole assembly of Crowley (i.e. Crowley in view of Pascual, as applied to claim 51 above) renders obvious all the limitations of claim 51, as set forth above, and further that the flexible upper shank and the flexible lower shank are both configured to be stiffer than the lower midsole (as explained in the 35 U.S.C. 103 rejection of independent claim 1 above).
Regarding claim 54, the modified midsole assembly of Crowley (i.e. Crowley in view of Pascual, as applied to claim 51 above) renders obvious all the limitations of claim 51, as set forth above, and further that the void space is formed in a heel region of the lower midsole (see annotated Fig. 1 below; Examiner notes that the identified boundary between the heel region and the forefoot region could be located in a different spot than shown, given the breadth of the term “region” with no additional structural boundary criteria recited in the claim).
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Regarding claim 55, the modified midsole assembly of Crowley (i.e. Crowley in view of Pascual, as applied to claim 51 above) renders obvious all the limitations of claim 51, as set forth above, and further that the flexible upper shank extends from a heel region to a forefoot region of the lower midsole (see annotated Fig. 1 below and Fig. 2, which shows that spring #35 (i.e. flexible upper shank) fills the space of the spring chamber #36 (i.e. void space) in Fig. 2; annotated Fig. 1 shows arbitrary heel and forefoot regions of the lower midsole)[.]
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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 have been considered but are moot in view of the new ground(s) of rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All art cited on the PTO-892 and not relied upon in an art rejection above is deemed relevant in the field of midsoles with void spaces for assisting with flexing during use.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMESON COLLIER whose telephone number is (571)270-5221. The examiner can normally be reached Monday - Friday 8 am - 5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CLINTON OSTRUP can be reached at (571)272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMESON D COLLIER/Primary Examiner, Art Unit 3732