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 Amendment
The amendment filed on 07/02/2026 has been entered. Claims 1-12 are currently pending in the application. Claims 1-3 have been previously withdrawn from further consideration. Claims 4-12 are being treated on the merits. Any rejection(s) and/or objection(s) made in the previous Office action and not repeated below, are hereby withdrawn due to Applicant's amendments and/or arguments in the response filed on 07/02/2026.
Claim Rejections - 35 USC § 112
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.
Claim 4 recites the limitation "the thickness of the polymeric membrane is varied such that the shoe has a differentiated elasticity at thicker portions of the polymeric membrane", which renders the claim indefinite. First, the claim has not set forth the polymeric membrane and/or the shoe has elasticity. Second, "a differentiated elasticity at thicker portions" means that the thicker portions have a differentiated elasticity; i.e., varying levels of elasticity. Noting the term "varied" encompasses the scope of increased and decreased, it is unclear why a differentiated elasticity at thicker portions of the polymeric membrane is a result of the thickness of the polymeric membrane being varied. Therefore, the metes and bounds of the claim are unclear and cannot be ascertained. For examination purposes, the examiner has interpreted that the polymeric membrane has an elasticity, and the thickness of the polymeric membrane is varied such that the shoe upper has a differentiated elasticity in different portions corresponding to variation of the thickness of the polymeric membrane.
Claim 4 recites the limitation "stitches of each of the inner and outer stocking portions". The claim has not defined any structure of the inner and outer stocking portions. It is unclear what is being referred to by "stitches". Knit stitches? Sewn stitches? Any other stitches? For examination purposes, the examiner has interpreted that each of the inner and outer stocking portions is formed of a knitted fabric, and the limitation has been construed to be "knit stitches of each of the inner and outer stocking portions".
Claim 4 recites the limitation "perforations of the polymeric membrane are positioned so as to create adhesion points between an insole of the shoe and the upper", which renders the claim indefinite. The claim has previously set forth the membrane element being interposed between the inner and outer stocking portions, which indicates that the polymeric membrane is separated from an insole of the sole by at least the outer stocking portion. The claim has not set forth the outer stocking portion having any feature to allow melted material to pass through the outer stocking portion. It is unclear how perforations of the polymeric membrane can be related to adhesion points between an insole of the shoe and the upper as claimed. Therefore, the metes and bounds of the claim are unclear and cannot be ascertained.
Claim 4 recites the limitation "the membrane element is conformed", which renders the claim indefinite. It is unclear what structure(s) the membrane element is conformed (to). Therefore, the metes and bounds of the claim are unclear and cannot be ascertained.
Claim 6 depends from claim 4 and recites the limitations "the first, second and third portions", "the first portion", "the second portion" and "the third portion". However, a first portion, a second portion and a third portion are first defined in claim 5. There is insufficient antecedent basis for these limitations in the claim. For examination purposes, the examiner has interpreted that claim 6 depends from claim 5.
Claim 12 recites the limitation "therefore structure to the shoe", which renders the claim indefinite. It is unclear what is being referred to by "structure to the shoe". Therefore, the metes and bounds of the claim are unclear and cannot be ascertained.
Claim 12 recites the limitation "which is created as a single body". The claim has previously recited a plurality of items. It is unclear what item is being referred to as to the term "which". For examination purposes, "which" has been construed to be the shoe.
Claim 12 recites the limitation "in which". The claim has previously recited a plurality of items. It is unclear what item is being referred to as to the term "which". For examination purposes, "which" has been construed to be the shoe.
Claim 12 recites the limitation "within a closed cell structure thereof". It is unclear which item is being referred to as to the term "thereof". For examination purposes, "thereof" has been construed to be the membrane element.
The remaining claims each depend from a rejected base claim and are likewise rejected.
Applicant is reminded that the examiner's interpretations of unclear limitations in the 112(b) section have been made per broadest reasoning interpretation for the purpose of applying prior art, and does not necessarily constitute a suggestion. Applicant should make proper claim amendments in commensurate with the scope of the original disclosure.
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 4-12 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 4, Hipp, in a first embodiment, discloses a shoe (shoe 100; figs. 1-4B; para. 0034) comprising:
an upper (upper 101; figs. 1-4B; para. 0034; claim 1) by a double stocking (outer knit layer 120 and inner knit layer 122; figs. 1-4B; para. 0040), including an inner stocking portion (inner knit layer 122; fig. 1; para. 0040) and an outer stocking portion (outer knit layer 120; fig. 1; para. 0040) turned over the inner stocking portion (figs. 1-4B; para. 0040), and
a membrane element (element 124, which can be a bootie, midsole, cleat plate, water-resistant membrane; figs. 3, 4A, 4B; paras. 0041, 0043) interposed between the inner and outer stocking portions (figs. 3, 4A, 4B; paras. 0041, 0043), the membrane element being a single-body element (a single body; figs. 3, 4A, 4B; para. 0043) formed of a perforated polymeric membrane (component 124 including thermoplastic material and having apertures forming a scaffold; paras. 0043, 0045),
Hipp does not disclose the shoe comprising a heel reinforcement for protection and stiffening of a heel of the shoe, the heel reinforcement being located between the inner and outer stocking portions. 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 two 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 (a heel support element; para. 0088) for protection and stiffening of a heel of the shoe is located between the two stockings (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 the shoe comprising a heel reinforcement for protection and stiffening of a heel of the shoe, the heel reinforcement being located between the inner and outer stocking portions as taught by Gautier, in order to provide a heel support for further improvement.
Hipp does not explicitly disclose wherein the perforated polymeric membrane is provided with a thermally activated adhesive material on both sides thereof, and the thickness of the polymeric membrane is varied such that the shoe has a differentiated elasticity at thicker portions of the polymeric membrane. However, Hipp does disclose wherein the polymeric membrane is provided with adhesives at least on one side thereof (para. 0041, 0044), and the thickness of the polymeric membrane is varied (component 124 comprising thicker portions; paras. 0025, 0045). Further, 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) made of an elastic material (para. 0025) and provided with a thermally activated adhesive material on both sides thereof (first and second adhesive layers 24, 26 positioned on two sides of membrane 25(252) and 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 polymeric membrane as disclosed by Hipp, with wherein the polymeric membrane is made of an elastic material and provided with a thermally activated 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. By this combination, the thickness of the polymeric membrane would be varied such that the shoe has a differentiated elasticity at thicker portions of the polymeric membrane.
Hipp does not explicitly disclose the 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 the limitation "wherein the membrane element is joined with the inner and outer stocking portions by heating the thermally activated adhesive material such that the adhesive material melts and flows between stitches of each of the inner and outer stocking portions whereby the membrane element and the inner and outer stocking portions form a single structure", the limitation is deemed a process limitation in a product claim. The above limitation requires that the membrane element is bonded with the inner and outer stocking portions by the thermally activated adhesive material, and the adhesive material has a distribution between stitches of each of the inner and outer stocking portions, forming a single structure. Hipp discloses wherein each of the inner and outer stocking portions comprises knitted stitches (layers 120, 122 being knitted layers; para. 0037), and the membrane element is bonded between the inner and outer stocking portions by adhesives and/or heat bonding (figs. 1-4B; para. 0037). In addition, Chang teaches wherein an assembled upper is formed by heating to cure the adhesive material 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 membrane element is bonded with the inner and outer stocking portions by the thermally activated adhesive material as taught by Chang, in order to provide a finished shoe upper. By combination of Hipp and Chang, the adhesive material would have a distribution between stitches of each of the inner and outer stocking portions, forming a single structure.
Hipp does not explicitly disclose wherein perforations of the polymeric membrane are positioned so as to create adhesion points between an insole of the shoe and the upper when polyurethane is injected into a mould for creating the insole, and the membrane element is conformed so as to prevent the injected polyurethane in the insole flowing towards the inner stocking. However, Hipp does disclose wherein the membrane element have apertures so that provides a scaffold that establishes a three-dimensional shape while retaining breathability and flexibility (para. 0045). It would have been an obvious matter of design choice to one skilled in the art before the effective filing date of the claimed invention to construct the membrane element of Hipp to have formed perforations throughout the membrane element, in order to obtain uniform breathability and flexibility in the entire membrane element, thereby providing sufficient ventilation, flexibility and comfort to a user's foot. Such a configuration is within the level of one of ordinary skill in the art. By this configuration, the perforations of the polymeric membrane (component 124) would be positioned so as to create adhesion points between an insole (sole component 106 shown in fig. 3; para. 0037) of the shoe and the upper (fig. 3) when polyurethane is injected into a mould for creating the insole (sole component 106 is formed from polyurethane; para. 0037), and the membrane element is conformed so as to prevent the injected polyurethane in the insole flowing towards the inner stocking (capable of performing the function as discussed above).
Regarding claim 5, Hipp, Gautier and Chang, in combination, disclose the shoe according to claim 4, and Hipp further discloses wherein the membrane element (configured to receive and/or substantially cover a foot of a user; figs. 1-3; para. 0043) is composed of
a first portion (a bottom portion; figs. 2-3, 4A, 4B; para. 0043) which conforms to the insole of the shoe (below or above sole component 106; figs. 3, 4A, 4B; para. 0037),
a second portion (a first side portion; figs. 2-3, 4A) which creates a side edge that runs from the heel, up an instep portion of the shoe, to a toe portion of the shoe, and ends at a beginning of an outer forefoot portion of the shoe (figs. 2-3, 4A), the outer forefoot portion of the shoe corresponding to a laterally outer forefoot of a user (figs. 2-3, 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 portion of the shoe (figs. 3, 4A).
Regarding claim 6, Hipp, Gautier and Chang, in combination, disclose the shoe according to claim 4, and Hipp further discloses wherein the first, second and third portions of the membrane element are obtained from a single piece of a membrane sheet (a single layer of material; para. 0043).
Regarding the limitation "cut out from the membrane sheet by punching", the limitation is deemed a process limitation in a product claim, and does not provide any new feature for the claimed shoe.
Hipp does not disclose wherein the second portion is joined by a seam which runs along a perimeter edge of the first portion, along a section including the heel, the instep portion, the toe portion, and up to an outer side at the outer forefoot portion, the third portion is joined to the first portion also at a peripheral edge of the first portion and is not affected by the second portion in a section running from the outer forefoot portion to the heel, and the second portion is joined vertically to the third portion at the heel and the outer forefoot portion. However, the above limitation only requires a continuous seam between the first portion and the second/third portions 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 a common 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 5. As discussed for claim 4, the perforations are provided throughout the membrane element (see the discussions for claim 4), including the first portion, wherein the membrane element is configured to allow only a predetermined amount of polyurethane to pass through the perforations (capable of performing the function as discussed above), and the predetermined amount of polyurethane that flows through the perforations allows the creation of the adhesion points between the insole and the upper (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 the membrane element (component 124; figs. 3, 4A, 4B) constitutes a support structure (as having sufficient rigidity; para. 0043) for the inner and outer stocking portions which, as knitted (para. 0040), would not be able to support themselves, such that the shoe 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 polymeric membrane of the membrane element is a polymer foam (fig. 4B; paras. 0037, 0044) that provides protection for both a knitted portion of the upper and a foot of a user (para. 0037).
Hipp does not explicitly disclose wherein the polymer foam is a closed cell foam. However, 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 5, and Hipp further discloses wherein in the membrane element, vertical heights of the second portion and the third portion (two side portions; figs. 3, 4A, 4B; paras. 0043, 0047) are configured to extend around an entire perimeter of a foot of a user (figs. 3, 4A, 4B), thereby creating a protective edge (figs. 3, 4A; paras. 0043, 0047) which allows a toe of the user to be cushioned against blows and protected from any water or moisture which may enter protects an internal instep part of the foot of the user against any water or moisture which may enter (figs. 3, 4A; paras. 0043, 0047), and provides a support and sealing structure for an arch area of the foot of the user (figs. 3, 4A; paras. 0043, 0047), while an outer side part of the foot of the user is cushioned against blows and protected from any water or moisture which may enter (figs. 3, 4A; paras. 0043, 0047),
wherein the protective edge also provides dimensional stability which ensures that a shape of the upper is maintained (figs. 3, 4A; paras. 0043, 0045, 0047),
in a heel area, the protective edge is higher than other portions of the protective edge to provide the heel area with greater stability as well as to provide the upper with greater wear resistance (figs. 3, 4A; paras. 0043, 0047), and
wherein the second and third portions include 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 11, Hipp, Gautier and Chang, in combination, disclose the shoe according to claim 4, and Hipp further discloses wherein the membrane element has a portion of increased thickness (component 124 has thicker portions; para. 0045) so as to increase an insulation capacity of the shoe (as being made of an insulating material; para. 0043).
Regarding claim 12, Hipp, Gautier and Chang, in combination, disclose the shoe according to Claim 4. By combination of Hipp and Chang, the membrane element would be adhered to the inner and outer stocking portions (as discussed for claim 1) so as to give support to the inner and outer stocking portions and therefore structure to the shoe (para. 0043), which is created as a single body (fig. 1), and in which the membrane element is elastic (as discussed for claim 1).
Hipp does not explicitly disclose wherein the membrane element contains air within a closed cell structure thereof. However, Hipp does disclose wherein the membrane element may be a midsole (fig. 4B; para. 0044) and consists of a polymer foam (fig. 4B; para. 0037). 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 containing air within a closed cell structure thereof, 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.
Response to Arguments
In view of Applicant's amendment, newly modified grounds of rejection have been identified and applied as necessitated by the amendment. Applicant's arguments filed 07/02/2026 have been fully considered but mostly are moot in view of the new grounds of rejection as discussed supra. Applicant's other arguments are addressed as follows.
Applicant's remarks: Applicant asserts Hipp primarily describes a multi-layer knit upper with two knitted textile layers, and emphasizes the advantages of eliminating adhesive layers within the interstitial space (e.g., paragraph [0044]); therefore, it would not have been obvious to one of ordinary skill in the art to modify Hipp to include an adhesive material which melts and flows "between stitches of each of the inner and outer stocking portions whereby the membrane element and the inner and outer stocking portions form a single structure," as required by claim 4, as Hipp teaches away from such a modification.
Examiner's response: Examiner respectfully disagrees. Hipp explicitly states "[t]he midsole 106 may reside within the interstitial space 129 with or without additional elements to retain the midsole 106 in the underfoot area, for example adhesives, stitches, heat bonding, RF welding, or sonic welding" (para. 0037) and "[m]idsole 106 may reside within interstitial space 129 with or without additional elements to retain midsole 106 in the underfoot area, for example adhesives or stitches" (para. 0044). As such, Hipp has disclosed a scenario of the membrane element being bonded between the inner and outer knitted layers with adhesives and/or heat bonding. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (MPEP 2123, Section II). Therefore, Hipp does not teach away from the claimed feature. Applicant's argument is not found persuasive.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AIYING ZHAO whose telephone number is (571)272-3326. The examiner can normally be reached on 8:30 am - 4:30 pm EST.
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/AIYING ZHAO/
Primary Examiner, Art Unit 3732
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