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 .
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3, 5, 8, 17-19, and 27-31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Andrew et al. (2023/0354959).
Regarding claim 1, Andrew discloses an article of footwear comprising: a posterior end; an anterior end opposite the posterior end (figs 1-13);
an upper (member 20A) including an interior void; a medial side and a lateral side disposed opposite the medial side;
a sole (member 200) including a first surface coupled with the upper and a second surface disposed opposite the first surface, the sole including one or more extensions extending (member 270) from the second surface with each of the one or more extensions including a pocket forming a concave surface when viewed from a ground surface when the article of footwear is in an upright position (member 264);
PNG
media_image1.png
346
660
media_image1.png
Greyscale
an outsole (member 380) extending from a first end disposed adjacent the anterior end of the article of footwear to a second end disposed adjacent the posterior end of the article of footwear, the outsole including a first surface facing the upper, a second surface engaging a ground surface, a toe portion (fig 6A), and a heel cap (fig 6A annotated above) extending from the second end of the outsole and connecting to the upper, wherein the heel cap extends around the posterior end of the article of footwear from the medial side of the article of footwear to the lateral side of the article of footwear (figs 5-7);
a cushioning element (member 230), the cushioning element including a first surface facing the upper and coupled with the sole, at least a portion of the cushioning element received by the respective pocket of each of the one or more extensions (member 244), and a second, ground-facing surface attached to the outsole (fig 6B-7).
Regarding claim 3, Andrew discloses a first set of bulbs extending around an outer periphery of the cushioning element, wherein the first set of bulbs extend from the posterior end to the anterior end (fig 5), and wherein the cushioning element further comprises a plurality of enclosed openings (fig 6E).
Regarding claim 5, Andrew discloses the cushioning element is a fluid-filled bladder (para 0110).
Regarding claim 8, Andrew discloses the outsole further comprises a plurality of lugs, wherein the plurality of lugs (member 431) are disposed on the second surface, and wherein each of the plurality of lugs include a ground-engaging face, and wherein the face of each of the plurality of lugs is disposed in a plane that is offset from a plane of the second surface.
Regarding claim 17, Andrew discloses an article of footwear (figs 1-13) comprising:
an upper (member 20A) extending from a posterior end of the article of footwear to an anterior end of the article of footwear;
a sole (member 200) including a first surface and a second surface disposed opposite the first surface, the sole extending from a first end disposed adjacent the anterior end of the article of footwear to a second end disposed adjacent the posterior end of the article of footwear, the first surface of the sole coupled to the upper, wherein the sole comprises:
a plurality of extensions (member 270) extending from the second surface of the sole with each extension of the plurality of extensions including a pocket (member 264) forming a concave surface of a respective extension when viewed from a ground surface formed therein, and wherein the sole comprises one or more depressions forming a recessed area of the second surface of the sole; a first engagement zone disposed in an anterior portion of the sole, the first engagement zone including a first depression; a second engagement zone disposed in the anterior portion of the sole, the second engagement zone including a second depression; and a third engagement zone disposed partially in the anterior portion of the sole and partially in a midfoot portion of the sole, the third engagement zone including a third depression (figs 6A -6E); and
a cushioning element (member 230) extending from the posterior end of the article of footwear to the anterior end of the article of footwear, the cushioning element including a first set of bulbs and a second set of bulbs, wherein the plurality of extensions is disposed over the first set of bulbs and the second set of bulbs such that the respective pockets of the plurality extensions are configured to engage respective bulbs of the first set of bulbs and respective bulbs of the second set of bulbs adjacent to the posterior end of the article of footwear, and wherein other portions of the cushioning element are directly engaged with the first engagement zone, the second engagement zone, and the third engagement zone adjacent the anterior end of the article of footwear (figs 6A -6E).
Regarding claim 18, Andrew discloses each bulb of the first set of bulbs and the second set of bulbs is interconnected (figs 6A -6E).
Regarding claim 19, Andrew discloses the first set of bulbs are disposed in each of a heel region of the article of footwear, a portion of a midfoot region of the article of footwear, and a forefoot region of the article of footwear, and wherein the second set of bulbs are disposed exclusively in the midfoot region of the article of footwear (fig 5).
Regarding claim 27, Andrew discloses the first depression of the first engagement zone is substantially circular in shape (fig 5-6E).
Regarding claim 28, Andrew discloses the first engagement zone includes a plateau surrounded by the first depression, wherein the plateau is substantially ovular in shape (figs 5-6E).
Regarding claim 29, Andrew discloses the second depression of the second engagement zone is substantially semi-circular in shape (figs 5-6E).
Regarding claim 30, Andrew discloses the third depression of the third engagement zone includes a first pair of branches extending in a lateral-medial direction on a first side of the sole and a second pair of branches extending in the lateral-medial direction on a second side of the sole opposite the first side (figs 8 and 21).
Regarding claim 31, Andrew discloses the third depression of the third engagement zone includes a plurality of branches, wherein the plurality of branches connect at a connecting area, and wherein the connecting area extends in a posterior-anterior direction (figs 8 and 21).
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) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Andrew et al. (2023/0354959) as applied to claim 1 above, and further in view of Dojan et al. (2005/0132608).
Regarding claims 6-7, Andrew teaches all limitation except the outsole includes a plurality of raised portions and a plurality of openings, wherein the plurality of raised portions are disposed on the first surface.
Dojan teaches an outsole (figs 9-11) includes a plurality of raised portions (member 31) and a plurality of openings (member 34), wherein the plurality of raised portions are disposed on the first surface.
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 Andrew by using the raise and opening portions of Dojan, in order to attenuate the ground reaction force and absorbing energy.
Claim(s) 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Andrew et al. (2023/0354959) in view of Dojan et al. (2005/0132608).
Regarding claim 11, Andrew 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 1-13);
an upper (member 20A) extending from the posterior end to the anterior end;
a sole (member 200) coupled to the upper, the sole including a plurality of extensions (member 270), each of the plurality of extensions having a first end and a second end, wherein each of the plurality of extensions extend from the first end toward the second end, wherein the second end is disposed nearer a ground surface than the first end when the article of footwear is an upright position, wherein the second end includes a concave surface (member 264) when viewed from the ground surface when the article of footwear is in the upright position; and
a cushioning element (member 230) 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, and wherein the first plurality of bulbs each have a top surface that is convex when viewed from a side surface of the sole, and wherein the top surface of each of the first plurality of bulbs is engaged by the concave surface of one of the first plurality of extensions (figs 6A-7).
PNG
media_image2.png
398
578
media_image2.png
Greyscale
Andrew does not teach each of the first plurality of bulbs extend radially outward of a radially outermost surface of the upper on the medial side such that the first plurality of bulbs forms an outermost portion of the article of footwear 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 such that the second plurality of bulbs forms an outermost portion of the article of footwear on the lateral side.
Dojan teaches a sole having each of the first plurality of bulbs extend radially outward of a radially outermost surface of the upper on the medial side such that the first plurality of bulbs forms an outermost portion of the article of footwear 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 such that the second plurality of bulbs forms an outermost portion of the article of footwear on the lateral side (fig 9C annotated above).
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 Andrew by using the extended sole portion of Dojan in order to increase the ground friction.
Regarding claim 12, the modified footwear Andrew-Dojan discloses the cushioning element is a fluid-filled bladder (Andrew, para 0110).
Regarding claim 13, the modified footwear Andrew-Dojan discloses the sole is coupled to the first surface of the cushioning element (Andrew, fig 6A).
Regarding claim 14, the modified footwear Andrew-Dojan discloses the sole is comprised of a foamed material (Andrew, para 0091), wherein the article of footwear further includes an outsole layer (Andrew, member 380) including a first surface, coupled to the second surface of the cushioning element, and a second, ground-engaging, surface, and wherein the second surface of the outsole layer includes one or more textured elements (Andrew, fig 11E) and one or more lugs (Andrew, member 431).
Allowable Subject Matter
Claim 21 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, date , 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
BAO-THIEU L. NGUYEN
Primary Examiner
Art Unit 3732
/BAO-THIEU L NGUYEN/ Primary Examiner, Art Unit 3732
Prosecution Insights