DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/14/2025 has been entered.
Claims 2, 13, 18, and 23 have been amended, claim 24 has been added, and claims 2-9, 11-17, 19, and 21-24 remain pending in this application.
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 2-9, 11-16, and 23-24 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 2, there is no support in the original specification for each upper projection having a smooth sidewall extending above the upper surface and through one of the openings. The written description is silent regarding a smooth sidewall, and the drawings lack sufficient specificity to support such language. The drawings do not show the entire sidewall of each upper projection, and do not clearly show a smooth sidewall.
Regarding claim 13, there is no support in the original specification for the sidewall of each upper projection being tapered toward its top surface. The written description is silent regarding a tapered sidewall of the upper projections, and the drawings lack sufficient specificity to support such language. The drawings do not show the entire sidewall of each upper projection, and do not clearly show tapered sidewalls.
Claims 3-9, 11-12, 14-16, and 23-24 depend from rejected claim 2.
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 2-9, 11-15, 23, and 24 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Del Biondi (US 6,082,024) in view of Loverin et al. (US 2010/0126043), herein Loverin.
Regarding claim 2, Del Biondi discloses an article of footwear, comprising: a sole comprising a base (12), the base comprising: an upper surface configured to face a wearer's foot and comprising openings (see annotated Fig. 2); a bottom surface opposite the upper surface; upper projections (see annotated Fig. 2), each comprising a smooth sidewall extending above the upper surface and through one of the openings; and lower projections (see annotated Fig. 2) extending below the bottom surface (column 1, lines 53-67; column 2, lines 23-42; Fig. 1-2).
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Del Biondi does not disclose that at least some of the upper projections are offset from the lower projections. Loverin teaches an article of footwear, comprising: a sole comprising a base (100), the base comprising: an upper surface configured to face a wearer's foot and comprising openings (at depression formed by flex portions 116); a bottom surface opposite the upper surface; upper projections (upper projection of contact pad 112), each extending above the upper surface and through one of the openings; and lower projections (lower projection of contact pad 112, 136) extending below the bottom surface; wherein at least some of the lower projections and the upper projections are offset from each other (paragraph 0059). It would have been obvious to one of ordinary skill in the art at the time of the invention to offset some of the upper projections from the lower projections in order to provide varying pressure and massage effect to the foot of the user, depending on the needs of the individual user.
Regarding claim 3, Del Biondi discloses that the upper projections, the lower projections, and the base form a monolithic structure (Fig. 2).
Regarding claim 4, Del Biondi discloses that each upper projection is configured to apply a localized force against a wearer's foot (column 3, lines 21; Fig. 2).
Regarding claim 5, Del Biondi discloses that a force applied to the lower projections pushes the upper projections against a wearer's foot (column 3, lines 21; Fig. 2).
Regarding claim 6, Del Biondi discloses that at least one of the lower projections forms a portion of an outsole (Fig. 2).
Regarding claim 7, Del Biondi discloses a plate (17) disposed on the upper surface of the base, wherein each upper projection extends through an opening (19) of the plate (Fig. 2).
Regarding claim 8, Del Biondi discloses that the upper projections project into a foot-receiving cavity of the shoe (Fig. 2).
Regarding claim 9, Del Biondi discloses that some of the lower projections and the upper projections are aligned with each other (Fig. 2).
Regarding claim 11, Del Biondi does not disclose fewer lower projections than upper projections. Loverin teaches that the sole may include additional lower projections (Fig. 2, 4, 10). It would have been obvious to one of ordinary skill in the art at the time of the invention to provide additional lower projections, such that there are fewer upper projections, in order to provide additional traction and cushioning to the bottom surface of the sole.
Regarding claim 12, Del Biondi discloses that the upper projections are disposed only in a heel portion and a forefoot portion of the sole (Fig. 1).
Regarding claim 13, Del Biondi discloses that each of the upper projections comprises a top surface, and wherein the sidewall of each upper surface is tapered toward its top surface (Fig. 2, 4).
Regarding claim 14, Del Biondi discloses that each top surface is flat (Fig. 4).
Regarding claim 15, Del Biondi discloses that each sidewall is spaced away from an edge of the respective opening (Fig. 2).
Regarding claim 23, Del Biondi discloses that the openings of the upper surface are formed by voids through the base, and each opening comprises a sidewall distanced from the sidewall of the upper projection extending therethrough (Fig. 2).
Regarding claim 24, Del Biondi discloses that the sidewall of each upper projection extends below its respective opening to above its respective opening (Fig. 2).
Claim 16 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Del Biondi and Loverin, as applied to claims 2 and 13, further in view of Righetto (US 2008/0313924).
Regarding claim 16, the combination of Del Biondi and Loverin does not disclose protrusions on each top surface. Righetto teaches an article of footwear, comprising: a sole comprising a base (1), the base comprising: an upper surface configured to face a wearer's foot and comprising openings; a bottom surface opposite the upper surface; upper projections (5), each extending above the upper surface and through one of the openings; and lower projections (3) extending below the bottom surface (paragraphs 0063-0068; Fig. 1-5). Each top surface comprises protrusions (12) to provide increased tactile sensations on a wearer's foot. The protrusion increase the comfort of the projections against the foot (paragraph 0065; Fig. 1-2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide protrusions, as taught by Righetto, to the top surface of each upper projection of Del Biondi and Loverin in order to provide a different tactile feel and massage effect to the foot of the user.
Claims 17 and 21-22 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Righetto (US 2008/0313924) in view of Del Biondi (US 6,082,024).
Regarding claim 17, Righetto discloses a sole for an article of footwear, comprising: a base (1) comprising an upper surface configured to face a wearer's foot; a plate (38) disposed on the upper surface; and upper projections (5) comprising a forefoot projection at a forefoot portion of the sole and a heel projection at a heel portion of the sole, wherein each of the projection extends from the base, above the upper surface, through an individual opening of the plate, and above the plate (paragraphs 0063-0070; Fig. 1-5, 8, 9).
Righetto does not disclose plural forefoot and heel projections. Del Biondi teaches an article of footwear, comprising: a sole comprising a base (12), the base comprising: an upper surface configured to face a wearer's foot; upper projections (upper projection of contact pad 112) comprising forefoot projections (4-9) and heel projections (10-11), each extending from the base. The projections provide massage pressure localized at predetermined nerve centers to provide therapeutic effects (column 1, lines 53-67; column 2, lines 23-42; Fig. 1-2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide plural forefoot and heel projections, as taught by Del Biondi, to the sole of Righetto in order to provide massage pressure localized at predetermined nerve centers to provide therapeutic effects.
Regarding claim 21, Righetto does not disclose the relative resiliencies of the plate and the base. It would have been obvious to one having ordinary skill in the art at the time the invention was made to make the plate less resilient than the base in order to provide a sole which cushions the foot and bellows (4) which move elastically, and to provide an insole which provides structure to the sole and support to the foot while maintaining the shape of the extensions through the slots. 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.
Regarding claim 22, Righetto discloses lower projections (3) extending from a bottom surface of the base opposite the upper surface (Fig. 3).
Allowable Subject Matter
Claim 19 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 08/14/2025 have been fully considered but they are not persuasive.
Regarding claim 17, Applicant argues that “neither Del Biondi nor Righetto discloses plural forefoot and heel projections each extending through an individual opening of a plate: Righetto has only a single forefoot opening and a single heel opening, and Del Bondi discloses no projections or openings at all. Therefore, the alleged modification of Righetto would not result in its forefoot projections and heel projections each extending through an individual opening.”
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Providing additional projections to Righetto includes multiple projections in the forefoot and heel, each with the structure of the projections as disclosed by Righetto. Del Biondi is merely used to teach that multiple projections may be located in each region of the foot, but the disclosure of the structure of the projections (including the projections extending through individual openings of the plate) is derived from Righetto.
Applicant’s arguments with respect to claim(s) 2-9 and 11-16 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
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