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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12-22-2025 is acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claims 1, 4-9, and 22 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. In this instant case, the limitations “upper surfaces of the first set of bulbs form part of an uppermost surface of the sole structure, and lower surfaces of the first set of bulbs form part of a lowermost surface of the sole structure” lacks support in the original specification which filed 03-14-2024; therefore such lack of detailed support in the original disclosure constitutes new matter.
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.
Claims 1, 4-9, and 22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is rejected because it recites limitations “the cushioning element including upper surfaces of the first set of bulbs form part of an uppermost surface of the sole structure, and lower surfaces of the first set of bulbs form part of a lowermost surface of the sole structure…. and an outsole layer coupled to the cushioning element”. The limitations is vague because an outsole, by accepting in the art, is the last outermost layer of the sole structure; therefore, how the lower surface of the cushioning is also the lowermost surface.
Any remaining claims are rejected as depending from a rejected base claim.
Regarding to the rejection claims the examiner respectfully states that the claim do not receive art rejection because there is not any logical reason to for a sole structure which have two different lowermost surfaces.
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 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) 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dojan et al. (2005/0132608) in view of Case et al. (2020/0154826).
Regarding claim 16, Dojan teaches an article of footwear comprising: a medial side and a lateral side opposite the medial side; a posterior end and an anterior end opposite the posterior end (figs 1-9G);
an upper (member 11) extending from the posterior end to the anterior end including an interior void; and
a cushioning element (member 30) including a first surface facing the upper and a second, ground-facing, surface, the cushioning element including a first plurality of bulbs disposed on the medial side and a second plurality of bulbs disposed on the lateral side (figs 7-8 and 9D-9E), wherein each of the first plurality of bulbs extend radially outward of a radially outermost surface of the upper on the medial side and wherein each of the second plurality of bulbs extend radially outward of a radially outermost surface of the upper on the lateral side (fig 9A and 9G).
Dojan does not teach a first set of valleys extends between respective bulbs of the first plurality of bulbs, a second set of valleys extends between respective bulbs of the second plurality of bulbs.
Case teaches a cushioning element having a first set of valleys extends between respective bulbs of the first plurality of bulbs, a second set of valleys extends between respective bulbs of the second plurality of bulbs (fig 4 annotated below).
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It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to modify the cushioning of Dojan by adding valleys to the cushioning, as taught by Case, in order to provide a comfortable structure that is suited for a wide variety of ambulatory activities, such as walking and running.
Regarding claim 17, the modified footwear Dojan-Case discloses the cushioning element is a fluid-filled bladder (Dojan, para 0053).
Regarding claim 18, the modified footwear Dojan-Case discloses the cushioning element further includes: a first enclosed opening (Dojan, members 68 and 70) and a second partially enclosed opening, wherein the second partially enclosed opening includes a mouth (fig 4 annotated above).
Regarding claim 19, the modified footwear Dojan-Case discloses the mouth exposes inner portions of the second partially enclosed opening to the external environment (figs 1-3 and fig 4 annotated above).
Regarding claim 20, the modified footwear Dojan-Case discloses the upper coupled directly to the cushioning element (Dojan, fig 9G).
Response to Arguments
Applicant's arguments, date 12-22-2025, with respect to the rejections of claims under 35 U.S.C §103 have been fully considered, but they are not persuasive because applicant argues that the prior art does not teach the amended limitations. However, this argument is not commensurate with the rejected claims, as the limitations have not been previously presented and they have been address as analyzed above.
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 BAO-THIEU L NGUYEN whose telephone number is (571)270-0476. The examiner can normally be reached M-F 7am-3pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KHOA D. HUYNH can be reached at (571)272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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BAO-THIEU L. NGUYEN
Primary Examiner
Art Unit 3732
/BAO-THIEU L NGUYEN/ Primary Examiner, Art Unit 3732