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 .
This is in response to Applicant’s amendment in which claims 1, 12, and 17 have been amended, claim 16 has been canceled, claims 1-15 and 17-22 remain pending, and claims 12-15 and 21-22 are withdrawn from consideration.
Claim Objections
Claim 20 is objected to because of the following informalities: Claim 20 recites the limitation “the one or midsole members” in lines 1-2. It appears that this limitation should read --the one or more midsole members--. Appropriate correction is required.
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 1-11 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 claim 1, there is no support in the original specification for the midsole member being removably attached to the upper. The specification states that “the midsole member 1178 is not attached to the upper 1102 or the frame 1170” or that “in some embodiments, the midsole member 1178 may be attached to at least one of the upper 1102 and/or the frame 1170” (see paragraph 00178). However, the specification does not specifically disclose removable attachment.
Claims 2-11 depend from rejected claim 1.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-8 and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clarke et al. (US 2005/0188562), herein Clarke, in view of Grove et al. (US 2004/0148803), herein Grove.
Regarding claim 1, Clarke discloses an article of footwear (10), comprising: an upper (14); a sole structure attached to the upper, the sole structure including: a frame (12) attached to the upper, the frame having a frame exterior surface and a frame interior surface, opposite the frame exterior surface, that defines a frame internal cavity; a unitary midsole member (16) removably attached to the upper and disposed within the frame internal cavity along each of a forefoot region, a midfoot region, and a heel region; and an outsole (bottom surface of 12), wherein the frame interior surface is adjacent portions of the upper and the midsole member, wherein the frame has a lattice-work structure formed by a plurality of apertures (22) extending through the frame exterior surface and the frame interior surface such that at least some of the portions of the upper and the midsole member adjacent the frame interior surface are exposed through the plurality of apertures (paragraphs 0033, 0037, 0038, 0046; Fig. 4-18).
Clarke does not disclose that the midsole member is foam. Grove teaches a removable midsole member (30) which is made of foam. The foam provides cushioning and acts to attenuate ground reaction forces and absorb energy (paragraph 0031). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the midsole member of foam, as taught by Grove, in order to provide a midsole member that provides cushioning and acts to attenuate ground reaction forces and absorb energy. 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. In re Leshin, 125 USPQ 416.
The limitation “formed via a supercritical foaming process” is a product-by-process limitation. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above)
Regarding claim 2, the limitation “the midsole member is not compressed after the supercritical foaming process” is a product-by-process limitation (see above).
Regarding claim 3, Clarke discloses that the midsole member is disposed at least partially within each of a forefoot region, a midfoot region, and a heel region of the article of footwear (Fig. 18).
Regarding claim 4, Clarke discloses that the midsole member extends between a distal end and a proximal end of the article of footwear and between a lateral side and a medial side of the article of footwear (Fig. 10, 18).
Regarding claim 5, Clarke discloses that the frame extends along at least a medial side and a lateral side of the article of footwear, and wherein the lattice-work structure of the frame extends along at least the lateral side of the article of footwear (Fig. 6).
Regarding claim 6, Clarke discloses that when force is applied to the sole structure by a user's foot, at least portions of the midsole member are compressed and at least some of the portions of the midsole member exposed through the plurality of apertures of the frame expand outwardly from the frame internal cavity at least partially through the plurality of apertures (wherein the midsole is formed of a resilient material such as polyurethane: paragraph 0041; Fig. 15).
Regarding claim 7, Clarke discloses that the frame includes an outsole member that at least partially defines the outsole of the sole structure (paragraph 0038, lines 12-14).
Regarding claim 8, Clarke discloses that the frame includes an upper frame member (sidewalls) attached to the upper and a lower frame member (lower surface) attached to the upper frame member, opposite the upper, and wherein the lower frame member at least partially defines the outsole of the sole structure (paragraph 0038; Fig. 5, 18).
Regarding claim 10, Clarke discloses that at least the lattice-work structure of the frame comprises an elastomeric material (such as thermoplastic polyurethane) such that at least the lattice-work structure is configured to elastically deform under force exerted on the sole structure by a user's foot (paragraph 0037).
Regarding claim 11, Clarke discloses that the sole structure further includes an insole (18), and wherein the insole is disposed adjacent an upper surface of the midsole member (Fig. 18).
Claim(s) 1-5, 7-9, and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hooper (US 2009/0071041) in view of Grove et al. (US 2004/0148803), herein Grove.
Regarding claim 1, Hooper discloses an article of footwear (100), comprising: an upper (120); a sole structure attached to the upper, the sole structure including: a frame (102, 150) attached to the upper, the frame having a frame exterior surface and a frame interior surface, opposite the frame exterior surface, that defines a frame internal cavity; a unitary midsole member (112) removably attached to the upper (via straps 150) and disposed within the frame internal cavity along each of a forefoot region, a midfoot region, and heel region of the sole structure; and an outsole (bottom surface of 102, 391-394), wherein the frame interior surface is adjacent portions of the upper and the midsole member, wherein the frame has a lattice-work structure formed by a plurality of apertures (apertures formed within strap lattice structure) extending through the frame exterior surface and the frame interior surface such that at least some of the portions of the upper and the midsole member adjacent the frame interior surface are exposed through the plurality of apertures (Fig. 3, 8) (paragraphs 0048, 0051, 0053, 0058-0059, 0085-0086, 0090-0092; Fig. 1-8).
Hooper does not disclose that the midsole member is foam. Grove teaches a midsole member (30) which is made of foam. The foam provides cushioning and acts to attenuate ground reaction forces and absorb energy (paragraph 0031). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the midsole member of foam, as taught by Grove, in order to provide a midsole member that provides cushioning and acts to attenuate ground reaction forces and absorb energy. 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. In re Leshin, 125 USPQ 416.
The limitation “formed via a supercritical foaming process” is a product-by-process limitation. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above)
Regarding claim 2, the limitation “the midsole member is not compressed after the supercritical foaming process” is a product-by-process limitation (see above).
Regarding claim 3, Hooper discloses that the midsole member is disposed at least partially within each of a forefoot region, a midfoot region, and a heel region of the article of footwear (Fig. 7).
Regarding claim 4, Hooper discloses that the midsole member extends between a distal end and a proximal end of the article of footwear and between a lateral side and a medial side of the article of footwear (Fig. 7).
Regarding claim 5, Hooper discloses that the frame extends along at least a medial side and a lateral side of the article of footwear, and wherein the lattice-work structure of the frame extends along at least the lateral side of the article of footwear (Fig. 7).
Regarding claim 7, Hooper discloses that the frame includes an outsole member (391-394) that at least partially defines the outsole of the sole structure (Fig. 4).
Regarding claim 8, Hooper discloses that the frame includes an upper frame member (150) attached to the upper and a lower frame member (102) attached to the upper frame member, opposite the upper, and wherein the lower frame member at least partially defines the outsole of the sole structure (Fig. 4, 6).
Regarding claim 9, Hooper discloses that the lower frame member is removably attached to the upper frame member (wherein the straps may be removed from the outsole member), and wherein, when the lower frame member is removed from the upper frame member, the midsole member is configured to be removeable from or insertable into the frame internal cavity.
Regarding claim 17, Hooper discloses an article of footwear (100), comprising: an upper (120); a sole structure attached to the upper, the sole structure including: a frame (102, 150) having a frame exterior surface and a frame interior surface, opposite the frame exterior surface, that defines a frame internal cavity, the frame including: an upper frame member (150) attached to the upper; and a lower frame member (102) removably attached to the upper frame member, opposite the upper; and one or more midsole members (112) disposed within the frame internal cavity and configured to be disengaged with the upper when the lower frame member is removed from the upper frame member, wherein the lower frame member at least partially defines an outsole of the sole structure, and the one or more midsole members at least partially define a midsole of the sole structure, wherein the frame interior surface is adjacent portions of the upper and the one or more midsole members, wherein the frame has a lattice-work structure formed by a plurality of apertures (apertures formed within strap lattice structure) extending through the frame exterior surface and the frame interior surface such that at least some of the portions of the upper and the midsole member adjacent the frame interior surface are exposed through the plurality of apertures (Fig. 3, 8) (paragraphs 0048, 0051, 0053, 0058-0059, 0085-0086, 0090-0092; Fig. 1-8).
Hooper does not disclose that the midsole member is foam. Grove teaches a removable midsole member (30) which is made of foam. The foam provides cushioning and acts to attenuate ground reaction forces and absorb energy (paragraph 0031). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the midsole member of foam, as taught by Grove, in order to provide a midsole member that provides cushioning and acts to attenuate ground reaction forces and absorb energy. 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. In re Leshin, 125 USPQ 416.
The limitation “formed via a supercritical foaming process” is a product-by-process limitation. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above)
Regarding claim 18, Hooper discloses that the lower frame member is removably attached to the upper frame member, and wherein, when the lower frame member is removed from the upper frame member, the one or more midsole members are configured to be removeable from or insertable into the frame internal cavity.
Regarding claim 19, Hooper discloses that the one or more midsole members are not attached to the upper or the frame (Fig. 6).
Regarding claim 20, Hooper discloses that the one or more midsole members define a substantial entirety of the midsole, and the lower frame member defines a substantial entirety of the outsole.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-11 and 17-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 SHARON M PRANGE whose telephone number is (571)270-5280. The examiner can normally be reached M-F 8:30-5 EST.
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/SHARON M PRANGE/ Primary Examiner, Art Unit 3732
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