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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “a tie layer” and “one or more embedded elements” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 31 is 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 31 is rejected because it recites limitations “the upper is directly attached to the cushioning element via a tie layer”. It is not clear how the upper can be directly attach to the cushioning element but a tie layer in between? In addition, what is the tie layer?
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) 1-6, 21-25, 28-34, 36, and 39-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greene (2017/0119096) in view of Sokolowski et al. (2006/0048413).
Regarding claim 1, Greene teaches an article of footwear (figs 1-11) comprising: an upper (member 12) including an interior void, the upper comprised of a first material (i.e. plastic, para 0042); a sole (member 16) formed of a second material different from the first material (i.e. EVA, para 0045); and a cushioning element (member 30) formed as a fluid-filled bladder and comprised of a third material different (i.e. TPU, para 0046) from the first material and the second material, the cushioning element including a first surface facing the upper and a second, ground-facing surface, wherein the upper is directly attached to the cushioning element (fig 1, para 0045).
Greene does not explicitly teach a sole disposed within the interior void of the upper.
Sokolowski teaches a sole disposed within an interior void of an upper (fig 2A, members 21 and 60).
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 footwear of Greene by having a sole within the interior void of the upper, in order to prevent damage to the bottom of the upper.
Regarding claims 2-3, the modified footwear Greene-Sokolowski discloses the cushioning element includes one or more openings (Greene, member 46) disposed between a plurality of bulbs (Greene, member 34, para 0051), wherein the one or more openings are areas of the cushioning element devoid of material between respective bulbs of the plurality of bulos (Greene, para 0051 and 0056).
Regarding claim 4, the modified footwear Greene-Sokolowski discloses the cushioning element is coupled to an outsole, the outsole layer forming a ground-engaging surface of the article of footwear (Greene, para 0045).
Regarding claim 5, the modified footwear Greene-Sokolowski discloses the cushioning element is wet cement bonded to the upper (Greene, para 0047 and 0071).
Regarding claim 6, the modified footwear Greene-Sokolowski discloses the cushioning element is thermobonded to the upper (Green, para 0047).
Regarding claim 21, the modified footwear Greene-Sokolowski discloses the second material of the sole is comprised of a polymer foam material (Green, para 0045).
Regarding claim 22, the modified footwear Greene-Sokolowski discloses the cushioning element is comprised of one or more barrier films formed of an elastomeric material (Green, para 0048).
Regarding claim 23, the modified footwear Greene-Sokolowski discloses the sole does not include any features that are permanently attached to the upper (any structure can be destroyed or detached from any structure depend on how the braking force is applied).
Regarding claim 24, the modified footwear Greene-Sokolowski discloses the sole includes a first surface and a second surface disposed opposite the first surface, and wherein one or more extensions protrude from the first surface of the sole (Sokolowski, fig 2A, member 50).
Regarding claim 25, the modified footwear Greene-Sokolowski discloses the second surface of the sole includes one or more textured elements (Sokolowski, para 0029).
Regarding claim 28, the modified footwear Greene-Sokolowski discloses each of the one or more extensions includes a pocket (Sokolowski, fig 2A where members 50 sit in).
Regarding claim 29, the modified footwear Greene-Sokolowski discloses each pocket of the one or more extensions engages a respective bulb of the plurality of bulbs of the cushioning element (Sokolowski, fig 2A).
Regarding claim 30, the modified footwear Greene-Sokolowski discloses the upper is formed as a textile skin (Green, para 0042).
Regarding claim 31, the modified footwear Greene-Sokolowski discloses the upper is directly attached to the cushioning element via a tie layer (Green, para 0045).
Regarding claim 32, the modified footwear Greene-Sokolowski discloses the upper includes a strobel, and wherein the strobel has an average thickness that is less than an average thickness of the sole and less than an average thickness of the cushioning element (Green, fig 1 and Sokolowski, fig 2A).
Regarding claim 33, the modified footwear Greene-Sokolowski discloses the sole includes one or more embedded elements (Sokolowski, fig 2A, member 50).
Regarding claim 34, the modified footwear Greene-Sokolowski discloses the outsole layer is comprised of a fourth material (i.e. rubber, Green, para 0045) different from each of the first material (i.e. plastic, Green, para 0042), the second material (i.e. EVA, para 0045), and the third material (i.e. TPU, Green, para 0046).
Regarding claim 36, the modified footwear Greene-Sokolowski discloses the outsole layer includes one or more textured elements disposed on a ground-facing surface of the outsole layer (Sokolowski, para 0029).
Regarding claim 39, the modified footwear Greene-Sokolowski discloses the second surface of the cushioning element forms a ground-engaging surface of the article of footwear (Green, para 0045).
Regarding claim 40, the modified footwear Greene-Sokolowski discloses the ground-engaging surface of the article of footwear includes one or more traction elements (Sokolowski, para 0029).
Claim(s) 26-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greene (2017/0119096) and Sokolowski et al. (2006/0048413) as applied to claim 24 above, and further in view of Grove et al (2004/0148803).
Regarding claims 26-27, the modified footwear Greene-Sokolowski teaches all limitations of the claim and Sokolowski further teaches a sidewall circumscribing the second surface of the sole (fig 2A, member 20).
Grove teaches a sole (fig 4) includes: one or more engagement zones disposed within the first surface of the sole, wherein the one or more engagement zones includes a first engagement zone and a second engagement zone, wherein the first engagement zone includes a first depression (members 24) surrounding a first plateau and a second plateau, and wherein the second engagement zone includes a second depression (members 34, para 0034).
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 sole of Green by adding the engagement zones and plateau, as taught by Grove, in order to enhance footwear comfort.
Claim(s) 35 and 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greene (2017/0119096) and Sokolowski et al. (2006/0048413) as applied to claim 34 above, and further in view of Jensen (2020/0375312).
Regarding claim 35, the modified footwear Greene-Sokolowski teaches all limitations except the outsole layer is formed of a thermoplastic elastomer.
Jensen teach an outsole forming of thermoplastic elastomer (para 0017).
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 outsole of Greene by using Jensen material in order to provide more durable for the outsole.
Regarding claim 38, the modified footwear Greene-Sokolowski teaches all limitations except the outsole layer includes one or more traction elements.
Jensen teach an outsole forming having one or more traction elements (para 0055).
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 outsole of Greene by adding Jensen traction elements in order to provide more suitable ground contacting surface.
Claim(s) 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greene (2017/0119096) and Sokolowski et al. (2006/0048413) as applied to claim 34 above, and further in view of J. Glassman et al. (3,186,013).
Regarding claim 37, the modified footwear Greene-Sokolowski teaches all limitations except the outsole layer material is more durable than all the layers.
Glassman teaches a sole having the outsole making of the most durable material (col 2, lines 65-70).
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 outsole of Greene by using Glassman outsole material in order to provide more life for the sole.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 and 21-40 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18/605,042. Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claimed essentially the same elements such as an upper, a sole disposed withing the upper, and a cushioning element wherein the cushioning element comprising a fluid-filled bladder. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 and 21-40are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18/605,050. Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claimed essentially the same elements such as an upper, a sole disposed withing the upper, and a cushioning element wherein the cushioning element comprising a fluid-filled bladder. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments, date 11-03-2025, with respect to the rejections of claims under 35 U.S.C §103 have been fully considered, but they are not persuasive 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-4pm.
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BAO-THIEU L. NGUYEN
Primary Examiner
Art Unit 3732
/BAO-THIEU L NGUYEN/Primary Examiner, Art Unit 3732