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
Applicant's election of Group II, claims 4-12 in the reply filed on 09/25/2025 is acknowledged.
Claims 1-3 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/25/2025.
Claims 4-12 are being treated on the merits.
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:
In claim 4, there is no antecedent basis in the specification for "heel reinforcement element".
Claim Objections
Claim 4 is objected to as it sets forth a plurality of elements; however, the plurality of elements are not separated by a line indentation. 37 CFR 1.75(i) and MPEP 608.01(m) require each element or step of the claim should be separated by a line indentation.
Claims 4-7 and 10 are objected to because of the following informalities:
In claim 4, line 3, "where" appears to read "wherein";
In claims 4-5, 7, 9-10 and 12, multiple instances of "the said" should read either "the" or "said";
In claim 4, line 8, "the level" appears to read "a level";
In claim 5, line 2, "of a second portion" appears to read "a second portion";
In claim 6, line 4, "the perimeter edge" appears to read "a peripheral edge";
In claim 6, line 4, "the section" appears to read "a section";
In claim 6, line 5, "the outer side" appears to read "an outer side";
In claim 6, the bottom line, "the third one" appears to read "the third portion";
In claim 7, line 5, "the inner stocking" appears to read "an inner stocking of the pair of stockings";
In claim 10, line 2, "the vertical heights" appears to read "vertical heights";
In claim 10, line 2, "varies" appears to read "vary";
In claim 10, "the toe" appears to read "a toe", "the internal step part" appears to read "an internal step part", "the arch area" appears to read "an arch area", "the heel area" appears to read "a heel area";
In claim 10, "the edge" with multiple instances appears to read "the protective edge" for clarity.
Appropriate correction is required.
The examiner respectfully notes that the claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical, idiomatic or antecedent basis issues. Effort has been made to identify all objectionable instances. However, since the claims are replete with grammatical and idiomatic errors and instances of lack of antecedent basis, the above listing of Claim Objections may not be conclusive and Applicant is required to review every claim for compliance with MPEP 2173.05(e).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: heel reinforcement element in claim 4.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
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 4-12 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 4 recites the limitation "heel reinforcement element" which invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the writing disclosure fails to provide any corresponding structure, material, or acts for performing the claimed function. There is a lack of written description for this limitation.
The remaining claims each depend from a rejected base claim and are likewise rejected.
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 4-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being which renders the claim indefinite. for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with indefiniteness.
Claim 4 recites "Shoe made with the procedure according to claim 1", which renders the claim indefinite. Applicant has elected Group II, claims 4-12 in the reply filed on 09/25/2025 for further prosecution and claim 1 has been withdrawn from consideration; however, claim 4 has not been amended accordingly. It is unclear what structural features are imparted by the procedure in claim 1. For examination purposes, "Shoe made with the procedure according to claim 1" has been construed to be "A shoe".
Claim 4 recites the limitation "of the type". It is unclear what type is being referred to. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation "[s]hoe…comprising an upper (2) formed from a pair of stockings". It is unclear what is "formed from a pair of stockings", the shoe or the upper. For examination purposes, the limitation has been construed to be "comprising an upper (2), the upper formed from a pair of stockings".
Claim 4 recites the limitation "this part". It is unclear what part is being referred to. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation "…characterized by the fact that interposed between the two stockings is a membrane element (3)". It is unclear what is being "characterized by the fact". For examination purposes, the limitation has been construed to be that the shoe is characterized by the fact that interposed between the two stockings is a membrane element (3).
Claim 4 recites the limitation "which is a single-body element". The claim has previously set forth multiple elements. It is unclear what is being referred to by "which". For examination purposes, "which" has been construed to be the membrane element.
Claim 4 recites the limitation "both sides thereof". The claim has previously set forth multiple elements. It is unclear what is being referred to by "thereof". For examination purposes, the limitation has been construed to be both sides of the polymeric membrane.
Claim 4 recites the limitation "as the thickness of the membrane increases, a differentiated elasticity of the upper and, consequently, of the shoe is obtained". It is unclear what concept is actually conveyed by this limitation in the product claim. In addition, it is unclear why the elasticity of the upper is related to the thickness of the membrane and why a differentiated elasticity of the upper is related to the thickness of the membrane because the claim does not even set forth the membrane being elastic. For the above reasons, the limitation is not examined in this Office action.
Claim 5 recites the limitation "- which creates a side edge that runs from the heel, up the instep, to the toe and ends at the beginning of the outer forefoot -". It is unclear what is the function of the two dash signs in the limitation. Therefore, the metes and bounds of the claim are unclear and cannot be ascertained.
Claim 5 recites the limitation "the conformation of the insole". First, there is insufficient antecedent basis for "the conformation" and "the insole" in the claim. Second, it is unclear what is being referred to by "conformation" in the limitation. For examination purposes, the examiner has interpreted that the shoe is configured to incorporate an insole, and the limitation has been construed to be a position of an insole.
Claims 5-6 recite the limitations "the heel", "the instep", "the toe" "the beginning" and "the outer forefoot". There is insufficient antecedent basis for the limitations in the claims. It is unclear whether the limitations are referred to parts/positions of a human foot or parts/positions of the shoe. Further, it is unclear how to define "outer forefoot" as to "outer". For examination purposes, the limitations have been construed to be a heel portion, an instep portion, a toe portion and a beginning of a forefoot portion of the shoe respectively.
Claim 6 depends from claim 4 and recites the limitation "the three portions". However, a first portion, a second portion and a third portion are first defined in claim 5. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, the examiner has interpreted that claim 6 depends from claim 5.
Claim 6 recites the limitation "the shape". There is insufficient antecedent basis for this limitation in the claim. For examination purposes, the limitation has been construed to be shape of the first, second and third portions.
Claim 6 recites the limitation "where they are cut out by punching and, once the shape has been cut out, the second portion (32) is joined by a seam which runs along the perimeter edge of the first portion, along the section including the heel, the instep, the toe, and up to the outer side at the outer forefoot, while the third portion (33) is joined to the first portion also at the peripheral edge of the first portion (31) and is not affected by the second portion in the section running from the outer forefoot to the heel and the second portion is joined vertically to the third one at the heel and the outer forefoot". The claim is set forth as a product claim; however, the limitation positively recites a process of making the shoe. In addition, at least the underlined texts are not clear either due to insufficient antecedent basis or the word flow in the word flow in the lengthy limitation. For example, it is unclear what structure is "along the section including the heel, the instep, the toe". Therefore, the metes and bounds of the claim are unclear and cannot be ascertained.
Claim 7 depends from claim 4 and recites the limitation "the first portion". However, a first portion is first defined in claim 5. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, the examiner has interpreted that claim 7 depends from claim 5.
Claim 7 recites the limitation "the first portion (31) of the said membrane element (3) has a series of perforations (30) which are suitably positioned so as to create adhesion points between the insole and the upper when the polyurethane is injected into mould for the creation of the insole and the conformation of the membrane element (3) prevents the injected polyurethane in the insole flowing towards the inner stocking, allowing only predetermined amounts of polyurethane to pass through the said perforations (30) and the amount of polyurethane that flows through the perforations allows the creation of joint points between the insole and the upper and, in particular, with the inner stocking". The claim is set forth as a product claim; however, the limitation appears to be reciting a function of a part of the shoe during a process of making the shoe. In addition, at least the underlined texts are not clear either due to insufficient antecedent basis or the word flow in the lengthy limitation. Therefore, the metes and bounds of the claim are unclear and cannot be ascertained. For examination purposes, the limitation has been construed to be the shoe comprising an insole below the polymeric membrane.
Claim 7 recites the phrase "in particular". It is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For examination purposes, the examiner has interpreted that the limitation following "in particular" is optional in the claim.
Claim 9 recites the relative term "good". The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree. It is unclear it is unclear what is included or excluded by "good". Therefore, the metes and bounds of the claim are unclear and cannot be ascertained.
Claim 10 depends from claim 4 and recites the limitations "the second portion" and "the third portion". However, a second portion and a third portion are first defined in claim 5. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, the examiner has interpreted that claim 10 depends from claim 5.
Claim 10 recites the limitation "the outer side part". There is insufficient antecedent basis for this limitation in the claim. It is unclear what is being referred to. Therefore, the metes and bounds of the claim are unclear and cannot be ascertained.
Claim 11 recites "an increasing the thickness of the membrane element". It is unclear how the membrane element can be increased in a finished shoe. Therefore, the metes and bounds of the claim are unclear and cannot be ascertained. As such, claim 11 is not examined in this Office action.
Claim 12 recites the limitation "when the upper is passed through the kiln, the adhesive material present on the surface of the membrane element heats up, activates, softens, and starts to melt and therefore flow between the stitches of the internal and external stockings, creating a bridge to form cohesion between the two layers of knitting and giving rise to a single structure since the said membrane, adhering to the two layers of knitting (i.e. to the two stockings), gives support to the knitting and therefore structure to the shoe and the structure of the upper, which is created as a single body which is nevertheless soft because the membrane is elastic and contains air within the closed cell structure thereof". The claim is set forth as a product claim; however, the limitation positively recites a process of making the shoe. In addition, at least the underlined texts are not clear either due to insufficient antecedent basis or the word flow in the lengthy limitation. It is noted that claim 12 depends from claim 4, but claim 4 does not set forth the pair of stocking being knitted stockings, the membrane being elastic, and/or a closed cell structure. Therefore, the metes and bounds of the claim are unclear and cannot be ascertained.
Claim limitation "heel reinforcement element" invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Effort has been made to identify all the indefinite issues; however, the above list is not necessarily to be comprehensive. In addition, the examiner notes that the suggestions aforementioned do not necessarily correct all of the indefiniteness issues, especially in light of the plethora of potential inconsistencies throughout the claims, but are merely examples to indicate how antecedent basis is established or that particular single instance could be clarified. Applicant is recommended to review for antecedent basis consistency based on the intended claim scope.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 10 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claim 10 recites the limitation "the vertical heights of the second portion (32) and the third portion (33) varies from area to area all the way around the perimeter of the foot", which appears to be claiming a part of the human body which are not directed to statutory subject matter (i.e. human per se). See MPEP 2106, Section I. It is respectfully suggested that this rejection may be overcome by including a phrase such as "configured to," "adapted to," "when in use," "capable of" or "while being worn."
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 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 4-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Hipp (US 2017/0311672 A1) in view of Gautier (US 2017/0181501 A1) and further in view of Chang (US 2018/0153257 A1).
Regarding claim 1, Hipp, in a first embodiment, discloses a shoe (shoe 100; figs. 1-4B; para. 0034) comprising an upper (upper 101; fig. 1; para. 0034; claim 1) formed from a pair of stockings (outer knit layer 120 and inner knit layer 122; fig. 1; para. 0040), one on top of the other (fig. 1; para. 0040),
wherein interposed between the two stockings is a membrane element (element 124, which can be a bootie, midsole, cleat plate, water-resistant membrane; figs. 3, 4A, 4B; paras. 0041, 0043), which is a single-body element comprising a membrane (a single layer of material; figs. 3, 4A, 4B; para. 0043), the said membrane having a selected thickness (inherent feature) depending on the level of performance required of the shoe (not limiting).
Hipp does not disclose wherein a heel reinforcement element is located inside the stockings for protection and stiffening of this part. However, Hipp does disclose that two or more component(s) 124 may be positioned in interstitial space 129 between outer layer 120 and inner layer 122 (para. 0041). In addition, Gautier, in an analogous art, teaches a shoe (fig. 1; shoe 1; para. 0036; claim 18) comprising an upper (fig. 1; paras. 0037, 0040) formed from a pair of stockings (envelopes 21, 31; figs. 1-4; paras. 0037, 0040, 0042), one on top of the other (figs. 2-4), where a membrane element (elements 51, 71, 101 and 121; figs. 2, 4, 11-12; paras. 0053, 0058, 0075, 0080) is interposed between the two stockings (figs. 2, 4, 11-12; paras. 0053, 0058, 0075, 0080), and a heel reinforcement element (a heel support element; para. 0088) is located inside the stockings for protection and stiffening of this part (as each of the elements being an intermediate component between the two envelopes 21, 31 for supporting the heel; paras. 0058, 0088). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have modified the shoe as disclosed by Hipp, with wherein a heel reinforcement element is located inside the stockings for protection and stiffening of this part as taught by Gautier, in order to provide a heel support for further improvement.
Hipp does not explicitly disclose wherein the membrane element consisting of a polymeric membrane and heat sealing double-sided adhesive with a film of adhesive material on both sides thereof, the said polymeric membrane having a thickness ranging from a minimum of 0.5 mm to a maximum of 1.5 mm. However, Chang, in an analogous art, teaches a shoe (figs. 1-2; para. 0019) comprising an upper (figs. 1-2), the upper comprising a membrane element (moisture-permeable waterproof membrane 25(252); fig. 5; para. 0027) between two layers (sock lining 23 and sock main body 27; figs. 1, 5; paras. 0022, 0027, 0029) of the upper, the membrane element consisting of a polymeric membrane (para. 0025) and heat sealing double-sided adhesive with a film of adhesive material on both sides thereof (first and second adhesive layers 24, 26 configured to be cured by heat; fig. 5; paras. 0022, 0027, 0029, 0035). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have modified the membrane element as disclosed by Hipp, with wherein the membrane element consisting of a polymeric membrane and heat sealing double-sided adhesive with a film of adhesive material on both sides thereof as taught by Chang, in order to provide a suitable water-proof membrane element that is easily attached to the two layers of the upper.
Hipp does not explicitly disclose the said polymeric membrane having a thickness ranging from a minimum of 0.5 mm to a maximum of 1.5 mm. However, Hipp has disclosed the general conditions of the claimed invention. In addition, Applicant does not set forth any criticality for the claimed range. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the thickness of the polymeric membrane as claimed, since the claimed values are merely an optimum or workable range, and can be discovered by routine experimentation depending on the desired characteristics of a final product. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05.
Regarding claim 5, Hipp, Gautier and Chang, in combination, disclose the shoe according to claim 4, and Hipp further discloses characterized in that the said membrane element (configured to receive and/or substantially cover a foot of a user; para. 0043) is composed of
a first portion (a bottom portion; figs. 3, 4A, 4B; para. 0043) which corresponds to an conformation of an insole (below or above an insole; figs. 3, 4A, 4B), of
a second portion (a first side portion; figs. 3, 4A) - which creates a side edge that runs from the heel, up the instep, to the toe and ends at the beginning of the outer forefoot (figs. 3, 4A) - and
a third portion (a second side portion; figs. 3, 4A), which starts at the heel and meets the second portion at the outer forefoot (figs. 3, 4A).
Regarding claim 6, Hipp, Gautier and Chang, in combination, disclose the shoe according to claim 4, and Hipp further discloses characterized in that the three portions of the membrane element are obtained from a single piece of a membrane sheet (a single layer of material; para. 0043).
As to the limitation "where they are cut out by punching and, once the shape has been cut out, the second portion is joined by a seam which runs along the perimeter edge of the first portion, along the section including the heel, the instep, the toe, and up to the outer side at the outer forefoot, while the third portion is joined to the first portion also at the peripheral edge of the first portion and is not affected by the second portion in the section running from the outer forefoot to the heel and the second portion is joined vertically to the third one at the heel and the outer forefoot", the limitation is deemed a process limitation in a product claim. The above limitation only requires a seam between the first portion and the second portion in the final shoe product. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the three portions of the membrane element from three separate pieces by stitching or another seaming method, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPO 177, 179. By this configuration, the modified membrane element meets the claimed requirement.
Regarding claim 7, Hipp, Gautier and Chang, in combination, disclose the shoe according to claim 4, and Hipp further discloses characterized in that the first portion of the said membrane element has a series of perforations (component 124 have apertures and form a scaffold; para. 0045) which are suitably positioned so as to create adhesion points between an insole (sole component 106 shown in fig. 3; para. 0037) and the upper (formed by knit layers 120, 122 which are liquid permeable; fig. 3; para. 0037) when the polyurethane is injected into mould for the creation of the insole and the conformation of the membrane element prevents the injected polyurethane in the insole flowing towards the inner stocking, allowing only predetermined amounts of polyurethane to pass through the said perforations and the amount of polyurethane that flows through the perforations allows the creation of joint points between the insole and the upper and, in particular, with the inner stocking (capable of performing the function as discussed above).
Regarding claim 8, Hipp, Gautier and Chang, in combination, disclose the shoe according to claim 4, and Hipp further discloses wherein said membrane element (component 124; figs. 3, 4A, 4B) constitutes a support structure (as having sufficient rigidity; para. 0043) for the two stockings which, as knitted (para. 0040), would not be able to support themselves and in this way, the shoe obtained has and maintains a structured shape (paras. 0042-0043).
Regarding claim 9, Hipp, Gautier and Chang, in combination, disclose the shoe according to claim 4, and Hipp further discloses wherein the said membrane element may be a midsole (fig. 4B; para. 0044) and consists of a polymer foam (fig. 4B; para. 0037) that provides good protection for both the knitted part and the user's foot (para. 0037).
Hipp does not explicitly disclose wherein the polymer foam is a closed cell foam. One of ordinary skill of the art would recognize that a closed cell foam would attenuate ground reaction forces more than an open cell foam of the same material due to the air pockets retained inside the closed cell foams. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected the foam material of the midsole as claimed, in order to effectively attenuate ground reaction forces and provide sufficient cushioning for a user's foot (Hipp; para. 0037). Such a configuration would be considered as a mere choice of preferred material that is on the basis of its suitability for the intended use. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07.
Regarding claim 10, Hipp, Gautier and Chang, in combination, disclose the shoe according to claim 4, and Hipp further discloses wherein in the said membrane element, the vertical heights of the second portion and the third portion (two side portions; figs. 3, 4A, 4B; paras. 0043, 0047) are determined all the way around the perimeter of the foot (figs. 3, 4A, 4B) depending on the structural performance desired (obvious feature), thereby creating a protective edge which, depending on the position, allows the toe to be cushioned against blows and any water or moisture which may enter in the event of rain or of water on the ground (figs. 3, 4A; paras. 0043, 0047), protecting the internal instep part against any water or moisture which may enter (figs. 3, 4A; paras. 0043, 0047) and providing a support and sealing structure for the arch area (figs. 3, 4A; paras. 0043, 0047), while the outer side part is cushioned against blows and any water or moisture which may enter (figs. 3, 4A; paras. 0043, 0047), where the edge also offers dimensional stability which ensures the upper maintains its shape over time and use and, in the heel area (figs. 3, 4A; paras. 0043, 0045, 0047), the edge that is created is higher to provide the said area with greater stability as well as providing the upper with greater wear resistance (figs. 3, 4A; paras. 0043, 0047), the said second and third portions featuring perforations to provide the shoe with different degrees of breathability (component 124 have apertures and forming a scaffold, and other areas not covered by component 124 have different degrees of breathability; fig. 4A; para. 0045).
Hipp, in first embodiment, does not explicitly disclose wherein the vertical heights of the second portion and the third portion vary from area to area all the way around the perimeter of the foot depending on the structural performance desired. However, Hipp, in a second embodiment (figs. 14-15; para. 0072), teaches wherein vertical heights of the second portion and the third portion may vary from area to area all the way around the perimeter of the foot (irregular zonal insert 333, as an inserted membrane element, varies height along the side portions; figs. 14-15; paras. 0072-0074). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have modified the membrane element as disclosed by Hipp in the first embodiment, with wherein the vertical heights of the second portion and the third portion vary from area to area all the way around the perimeter of the foot depending on the structural performance desired as taught by Hipp in the second embodiment, in order to provide tailored cushioning support to the portions of upper.
Regarding claim 12, Hipp, Gautier and Chang, in combination, disclose the shoe according to Claim 4. As to the limitation "when the upper is passed through the kiln, the adhesive material present on the surface of the membrane element heats up, activates, softens, and starts to melt and therefore flow between the stitches of the internal and external stockings, creating a bridge to form cohesion between the two layers of knitting and giving rise to a single structure since the said membrane, adhering to the two layers of knitting (i.e. to the two stockings), gives support to the knitting and therefore structure to the shoe and the structure of the upper, which is created as a single body which is nevertheless soft because the membrane is elastic and contains air within the closed cell structure thereof", which is a process limitation in a product claim. Chang teaches an assembled upper is formed by heating to cure the adhesive materials thereby bonding the two stockings together (fig. 1; para. 0035). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have configured the upper as disclosed by Hipp, with wherein the an assembled upper is formed by heating to cure the adhesive materials thereby bonding the two knitted stockings together as taught by Chang, in order to provide a finished shoe upper. By combination of Hipp and Chang, the modified shoe meets the claimed requirement.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Additional relevant references cited on attached PTO-892 form(s) can be used to formulate a rejection if necessary. Hipp (US 2020/0281302 A1) and von Blucher (US 2005/0076541 A1) also each disclose a shoe upper comprising a pair of stockings and an membrane element between the two stockings.
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/AIYING ZHAO/Primary Examiner, Art Unit 3732