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 Amendments
The amendments filed with the written response received on 20 November 2025 have been considered and an action on the merits follows. As directed by the amendment, claim(s) 1, 3-4, 6-8, 12-13, and 16 has/have been amended, claim(s) 5 is/are canceled, claim(s) 20-21 has/have been added, and claim(s) 9-10 and 14-15 has/have been withdrawn. Accordingly, claim(s) 1-4 and 6-21 is/are pending in this application with an action on the merits to follow regarding claim(s) 1-4, 6-8, 11-13, and 16-21.
Because of the applicant's amendment, the following in the office action filed 26 August 2025, are hereby withdrawn:
Objections to the Drawings
Objections to the Specification
Objections to the Claims
Rejections under 35 USC 112(b)
Rejections under 35 USC 101
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-4, 6-8, 11, and 16-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oh US 20230000203 in view of Gantz US 20210022444.
Regarding Independent Claim 1, Oh discloses a sole (Figs. 1-2 & 9 #100/1200/1300) comprising: an upper surface (Oh Annot. Fig. 1) that defines a support surface (Oh Annot. Fig. 1) configured for supporting a bottom of a foot of a wearer (Abstract); a lower surface (Oh Annot. Fig. 1) that defines a ground contact surface (¶0047); and a peripheral surface (Oh Annot. Fig. 1) that connects the upper surface and the lower surface (Fig. 1); wherein the upper surface includes a metatarsophalangeal (MP) joint support region (Oh Annot. Fig. 1) configured for supporting the bottom of the foot at a position corresponding to an MP joint of the foot of the wearer (¶0019); wherein the peripheral surface includes a medial foot side surface (Oh Annot. Fig. 2) located on a medial foot side (Oh Annot. Fig. 1) and a lateral foot side surface (Oh Annot. Fig. 2) located on a lateral foot side (Oh Annot. Fig. 1); wherein at least one side surface selected from the group consisting of the medial foot side surface and the lateral foot side surface is provided with an indicator positioned adjacent to the MP joint support region (Oh Annot. Fig. 1; ¶0044); but does not expressly disclose wherein the indicator on the at least one side surface is visually recognizable by a color difference between the indicator and a region adjacent to the indicator on the at least one side surface.
Gantz teaches a shoe sole (Fig. 1A) with an indicator (Fig. 1A #12A”) that is visually recognizable by a color difference (¶0013-0014, 0096, 0099) between a portion corresponding to the indicator of the at least one side surface (Gantz Annot. Fig. 1A) and a portion corresponding to an adjacent region of the indicator of the at least one side surface (Gantz Annot. Fig. 1A).
Both Oh and Gantz teach analogous inventions in the art of shoe soles with different sidewall parts. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Oh with the teachings of Gantz such that the indicator would have a visually recognizable color difference between a portion corresponding to the indicator of the at least one side surface and a portion corresponding to an adjacent region of the indicator of the at least one side surface because, “The combination of the optical element and the optional textured surface imparts structural color (e.g., single color, multicolor, iridescent corresponding the wavelength range), to the article, where the structural color can be designed to be different than the color of the components of the optical element or the underlying material, optionally with or without the application of pigments or dyes to the article. In this way, the structural color imparts an aesthetically appealing color to the article without requiring the use of inks or pigments and the environmental impact associated with their use,” (Gantz ¶0021). Further, it is also noted that claimed limitations to color differences are related to ornamentation only which have no functional relationship to the product will not distinguish the claimed product from the prior art (MPEP § 2111.05). See also In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401,404 (Fed. Cir 1983) ("Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability”).
Regarding Claim 2, the modified sole of Oh discloses the sole according to claim 1, wherein the indicator is provided so as to reach a connecting portion between the at least one side surface and the upper surface (Figs. 1-2).
Regarding Claim 3, the modified sole of Oh discloses the sole according to claim 1, wherein the indicator is provided to include a central position (Fig. 2) in a thickness direction of the sole at least one side surface of the sole (Fig. 2).
Regarding Claim 4, the modified sole of Oh discloses the sole according to claim 1, wherein the indicator is provided to include a position 10% above (Fig. 2) a contour (Oh Annot. Fig. 1) on the at least one side surface (Oh Annot. Fig. 2) in a case where the contour that appears in a plan view of the sole is used as a reference (Fig. 2).
Examiner notes that italicized limitations in the Prior Art rejections are functional and do not positively recite a structural limitation, but instead require the ability of the structure to perform and/or function. As the Prior Art of Oh discloses the structure of the sole, there would be a reasonable expectation for the sole to perform such functions as explained after each functional limitation.
Regarding Claim 6, the modified sole of Oh discloses the sole according to claim 1, wherein the color difference is greater than or equal to a delta E value of 0.8 (Gantz ¶0096, 0099).
Regarding Claim 7, the modified sole of Oh discloses the sole according to claim 1, wherein the indicator is visually recognizable (Figs. 1-2 & 9), but does not expressly disclose that the indicator is visually recognizable specifically by a brightness difference between the indicator of the at least one side surface and a region of the at least one side surface adjacent to the indicator of the at least one side surface.
Gantz teaches a shoe sole (Fig. 1A) with an indicator (Fig. 1A #12A”) that is visually recognizable specifically by a brightness difference (Gantz discusses “lightness” [the same as “brightness”] in ¶0092, 0095, 0103, 0107) between the indicator of the at least one side surface and a region of the at least one side surface adjacent to the indicator of the at least one side surface (Gantz Annot. Fig. 1A).
Both Oh and Gantz teach analogous inventions in the art of shoe soles with different sidewall parts. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Oh with the teachings of Gantz such that the indicator would have a visually recognizable brightness difference between the indicator of the at least one side surface and a region of the at least one side surface adjacent to the indicator of the at least one side surface because, “Imparting brighter, more luminous colors offers significant advantages as it allows a high level of relatively pure color to be imparted to an article while requiring low levels of raw materials to be used to impart the color. Colors imparted by highly reflective optical elements are also more visibility in low levels of light as compared to the colors imparted by pigments, dyes, and optical elements with lower levels of reflectivity. This offers significant advantages as the use of highly-reflective optical elements can be used to increase visibility to improve safety or detectability (e.g., by making an article more visible at night),” (Gantz ¶0010).
Regarding Claim 8, the modified sole of Oh discloses the sole according to claim 7, wherein the brightness difference is greater than or equal to a delta L value of 30 (Gantz ¶0084-0085, 0095, 0107).
Regarding Claim 11, the modified sole of Oh discloses the sole according to claim 1, wherein the indicator includes a medial foot side indicator (Oh Annot. Fig. 1) provided on the medial foot side surface (Oh Annot. Fig. 1) and a lateral foot side indicator (Oh Annot. Fig. 1) provided on the lateral foot side surface (Oh Annot. Fig. 1).
Regarding Claim 16, the modified sole of Oh discloses the sole according to claim 1, comprising: a midsole (Fig. 1 #1200/1300) constituting the upper surface (Fig. 1); and an outsole (¶0020) constituting the lower surface (Fig. 1), wherein a portion of the midsole comprises at least part of the at least one side surface (Fig. 2); and wherein the indicator is provided in the portion of the midsole (Oh Annot. Fig. 1).
Regarding Claim 17, the modified sole of Oh discloses the sole according to claim 16, wherein the indicator is formed of a portion (Oh Annot. Fig. 1) of a same material as the midsole (¶) 0048-0049) as a part of the midsole (Fig. 1).
Regarding Claim 18, the modified sole of Oh discloses the sole according to claim 16, but does not expressly disclose wherein: the midsole where the indicator is positioned includes an inclined surface directed downward toward an outer side along a left-right direction of the sole coinciding with a foot width direction of the foot of the wearer.
Gantz teaches a shoe sole (Fig. 10A-C #146) with a midsole where the indicator is positioned includes at least one side surface (Fig. 10A-C #146 lateral) includes an inclined surface (Gants Annot. Fig. 10C) directed downward toward an outer side (Gants Annot. Fig. 10C) along a left-right direction of the sole coinciding with a foot width direction of the foot of the wearer (Gants Annot. Fig. 10C).
Both Oh and Gantz teach analogous inventions in the art of shoe soles with different sidewall parts. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Oh with the teachings of Gantz such that the midsole of the portion constituting the at least one side surface includes an inclined surface directed downward toward an outer side along a left-right direction of the sole coinciding with a foot width direction of the foot of the wearer so that, “ the optical element can be disposed (e.g., affixed, attached, adhered, bonded, joined) on a surface of one or more components of the footwear, such as on the shoe upper and/or the sole. The optical element can be incorporated into the sole by incorporating it into a cushioning element such as a bladder or a foam. The sole and/or upper can be designed so that one or more portions of the structurally colored component are visible in the finished article, by including an opening, or a transparent component covering the structurally colored component, and the like,” (Gantz ¶0022).
Regarding Claim 19, the modified sole of Oh discloses a shoe comprising: the sole according to claim 1; and an upper provided above the sole (Fig. 1).
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oh and Gantz as applied to claims 1 and 11 above.
Regarding Claim 12, the modified sole of Oh discloses the sole according to claim 11, wherein: the medial foot side indicator continuously extends along a part of the medial foot side surface of the sole at least within a range (Oh Annot. Fig. 1 shows a range, Fig. 2); and the lateral foot side indicator continuously extends along a part of the lateral food side surface of the sole at least within a range (Oh Annot. Fig. 1 shows a range; Fig. 2).
Oh does not expressly disclose the medial foot side surface of the sole at least within a range of 24% to 36% with respect to an entire length of the sole from a front side end toward a rear side end in a front-back direction of the sole coinciding with a foot length direction of the foot of the wearer, and the lateral foot side indicator continuously extends along a part of the lateral foot side surface of the sole at least within a range of 31% to 40% with respect to the entire length of the sole. However, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to make the shoe sole indicator and axial lines pass through the claimed percentage positions in order to give the indicator and the shoe sole the proper visual aesthetic and function when in use, since the claimed values are merely an optimum or workable range. 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 13, the modified sole of Oh discloses the sole according to claim 11, wherein: the medial foot side indicator is located only within a first region extending within a range (Oh Annot. Fig. 1 shows a range, Fig. 2); and the lateral foot side indicator is located only within a second region extending within a range (Oh Annot. Fig. 1 shows a range, Fig. 2).
Oh does not expressly disclose the medial foot side indicator is located only within a first region extending within a range 17% to 38% of an entire length of the sole from a front side end toward a rear side end in a front-back direction of the sole which is configured for coinciding with a foot length direction of the foot of the wearer, he lateral foot side indicator is located only within a second region extending within a range of 21% to 45% of the entire length of the sole from the front side end toward the rear side end in the front-back direction of the sole. However, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to make the shoe sole indicator and axial lines pass through the claimed percentage positions in order to give the indicator and the shoe sole the proper visual aesthetic, since the claimed values are merely an optimum or workable range. 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.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oh and Gantz as applied to claim 1 above, and further in view of Danaberg US 4597195.
Regarding Claim 20, the modified sole of Oh discloses the sole according to claim 1, but does not expressly disclose wherein no portion of the indicator extends continuously across the sole from the lateral foot side surface to the medial foot side surface.
Dananberg teaches a shoe sole (Figs. 5-5A & 6 #10) with an indicator (Fig. 5 #14) wherein no portion of the indicator extends continuously across the sole from the lateral foot side surface to the medial foot side surface (Fig. 6).
Both Oh (as modified by Gantz) and Dananberg teach analogous inventions in the art of shoe soles with different sidewall parts. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify (as modified by Gantz) with the teachings of Dananberg such that no portion of the indicator extends continuously across the sole from the lateral foot side surface to the medial foot side surface so that that, “plantarflexed position will thereby allow for the extension of the human great toe during the human gait cycle in an efficient fashion,” (Dananberg Col. 1:15-21).
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oh and Gantz as applied to claim 1 above, and further in view of Stockbird US 20210137213.
Regarding Claim 21, the modified sole of Oh discloses the sole according to claim 1, but does not expressly disclose wherein the indicator is spaced apart from the lower surface.
Stockbird teaches a shoe sole (Figs. 1A-1B #2) with an indicator (Figs. 1A-1B #12) wherein the indicator is spaced apart from the lower surface (Figs. 1A-1B #38 ground contact surface).
Both Oh (as modified by Gantz) and Stockbird teach analogous inventions in the art of shoe soles with different sidewall parts. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify (as modified by Gantz) with the teachings of Stockbird such that the indicator is spaced apart from the lower surface so that the indicator does not wear out or become damaged by ground contact when the user is walking.
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Response to Arguments
Applicant’s arguments, filed 20 November 2025, with respect to the 35 USC 102 and 35 USC 103 rejections of claims 1, 3-4, 6-8, 12-13, 16, and 18 have been considered but are not persuasive.
Regarding the 35 USC 102 rejection of claim 1 and 35 USC 103 rejection of claim 5, Applicant argues,
“The Office Action appears to make a conclusory statement that because both Oh and Gantz relate to shoe soles with "different sidewall parts", it would be obvious to combine them in a manner that describes or suggests all of the recited elements. Office Action at p. 15. However, this rationale provides no indication as to why one of ordinary skill in combining Oh and Gantz would choose to position the indicator having the color difference "adjacent to the MP joint support region" as recited in claim 1. Applicant respectfully submits that the Examiner has not met the burden to establish a prima facie case of obviousness.” (Remarks Page 4).
The Examiner respectfully disagrees. Oh teaches a midsole with two different sidewall parts. Gantz teaches a shoe with a two different sidewall parts, one of which is a structurally colored article. It would not be unusual to make a portion of a sidewall of a sole a different color as this is well-known in the art. Further, the color difference between the two regions is related to ornamentation and provides no structural or functional change in the invention itself. See the 35 USC 103 rejection above.
Applicant submits that the dependent claims are patentable based on their dependencies from claim(s) 1; however, as discussed in the rejection and in the arguments above, claim(s) 1 is/are not allowable over the prior art. Therefore, these arguments have not been found convincing and the rejections of the independent claims under 35 U.S.C. 102 and/or 103 have been maintained.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAQUEL M. WEIS whose telephone number is 571-272-6804. The examiner can normally be reached Mon-Fri: 0800-1700.
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/RAQUEL M. WEIS/Examiner, Art Unit 3732
/HEATHER MANGINE, Ph.D./Primary Examiner, Art Unit 3732