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 Amendment
Applicant’s amendment of 09/05/2025 is acknowledged.
Claims 1-23 are presented.
Claims 1, 13, and 20 are presented in independent form and are amended.
Claims 21-23 are newly presented.
The present office action treats claims 1-23 on the merits.
The present office action is a final rejection.
Response to Arguments
Applicant’s REMARKS of 09/05/2025 are fully considered (see p. 5-7 of the reply).
Regarding Claim Objections (p. 5): Applicant’s arguments are fully considered. Applicant’s claim amendments render the claim objection as applied in the previous office action moot.
Regarding Rejections under 35 U.S.C. § 103 (p. 5-7): Applicant’s arguments are fully 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.
Regarding Newly Added Claims (p. 7): Applicant’s arguments are fully 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.
Claim Rejections - 35 USC § 103
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(s) 1-4, 10, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Paterson, EP-3868243-A1, newly cited] in view of [Byrd, US 7,213,354, previously cited].
Regarding claim 1:
Paterson Figs. 6a-6b discloses:
a sole structure 600 comprising:
a bottom sole 660 (i.e. “outsole 660”; para 170);
a midsole 611 (i.e. “upper midsole part 611”; para 170) disposed above at least a portion of the bottom sole (Figs. 6a-6b); and
a carbon fiber (para 66) reinforcing structure 620 disposed between the bottom sole and the midsole (Figs. 6a-6b), defining a plurality of fingers 621, 622, 623, 624 that extend forward in a longitudinal direction (Figs. 6a-6b), the plurality of fingers including three or more fingers (i.e. the four fingers 621, 622, 623, 624) to promote medial-lateral flexibility of the carbon fiber reinforcing structure (para 18).
Paterson Figs. 6a-6b does not expressly disclose
a bottom sole;
a midsole disposed above at least a portion of the bottom sole; and
a carbon fiber plate disposed between the bottom sole and the midsole, the carbon fiber plate defining a plurality of fingers that extend forward in a longitudinal direction, the plurality of fingers including three or more fingers to promote medial-lateral flexibility of the carbon fiber plate.
However and in further view of Paterson:
Paterson further teaches (Fig. 6c):
a carbon fiber (para 66) plate 620 (i.e. “reinforcing structure 620”; para 172; although numeral 620 is not provided in Fig. 6C, the plate 620 is depicted in Fig. 6c and comprises 621, 622, 623, 624, and 628) defining a plurality of fingers (see annotated Fig. 6c – a below) that extend forward in a longitudinal direction (as in annotated Fig. 6c – a below), the plurality of fingers including three or more fingers (plate of Fig. 6C comprises four fingers; refer to annotated Fig. 6c – a below) to promote medial-lateral flexibility of the carbon fiber plate (para 18; para 172).
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Paterson teaches the carbon fiber plate of Fig. 6c is “a modification of the reinforcing structure 620” of Figs. 6a-6b (para 172) wherein reinforcing members 621-624 are “connected...by a connecting member 628” (para 172) wherein such connection is configured to “provide some additional stability to the overall reinforcing structure provided by the reinforcing members, for example in the heel region where heel strike usually occurs. However, the connection provided by this connection member may be only supplemental in the sense that it does not impede, or at least not completely negate, the reinforcing members' ability to react and respond independently to the forces acting on them during a gait cycle, in particular not in the front half of the foot....The connecting member may, for example, connect several or all of the reinforcing members close to their rearward end, to improve the stability in this area (which maybe the midfoot- or heel area, for example, depending on the rearward extension of the reinforcing members.)” (paras 72-73).
It 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 to have modified the sole structure 600 of Paterson Figs. 6a-6b such that it is provided with the carbon fiber plate of Fig. 6c, the carbon fiber plate disposed between the bottom sole and the midsole, the carbon fiber plate defining a plurality of fingers that extend forward in a longitudinal direction, the plurality of fingers including three or more fingers to promote medial-lateral flexibility of the carbon fiber plate in order to provide additional stability in the region of the sole structure at which the connecting member 628 is provided, as suggested by Paterson (paras 72-73).
The modified Paterson does not meet the limitation
A training shoe comprising:
a bottom sole;
a midsole disposed above at least a portion of the bottom sole;
one or more panels attached to one or both of the midsole and the bottom sole to define an enclosure for a person's foot; and
a carbon fiber plate disposed between the bottom sole and the midsole, the carbon fiber plate defining a plurality of fingers that extend forward in a longitudinal direction of the training shoe, the plurality of fingers including three or more fingers to promote medial-lateral flexibility of the carbon fiber plate.
In further view of Paterson: the sole structures disclosed by Paterson are appropriate for use in a training shoe (para 11). Paterson is silent as to any express one or more panels attached to one or both of the midsole and the bottom sole to define an enclosure for a person's foot.
Nevertheless, Byrd teaches a panel (“upper 60”; col. 6 line 62) attached to a midsole 20 (“attached to the midsole 20”; col. 6 lines 62-63) and a bottom sole 40 (“attached to the...outsole 40”; col. 6 lines 62-63) to define an enclosure for a person’s foot (“defining a volume for enclosing a wearer’s foot”; col. 6 lines 63-64) in order to yield a training shoe (“article of footwear 10”; col. 6 lines 61-62, wherein the article of footwear 10 is capable of use whilst training such that it is a training shoe). In Byrd, panel 60, midsole 20, and bottom sole 40 are attached in such a way that a longitudinal direction of the sole structure 20, 40 of Byrd is a longitudinal direction of the shoe 10 of Byrd (see Fig. 6, for example).
Byrd further teaches the panel (i.e “upper”) “is designed to snugly and comfortably enclose the foot” (col. 1 lines 42-43).
It 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 to have modified the modified Paterson such that it is combined with a panel attached to its midsole and its bottom sole to define an enclosure for a person’s foot to yield a shoe and such that the longitudinal direction of its sole structure is the same as the longitudinal direction of the shoe, as in Byrd, in order to provide a wearer an opportunity to snugly and comfortably enclose his foot, as taught by Byrd (col. 4 lines 42-43).
In adopting the modification, one would arrive at A training shoe comprising: a bottom sole; a midsole disposed above at least a portion of the bottom sole; one or more panels attached to one or both of the midsole and the bottom sole to define an enclosure for a person's foot; and a carbon fiber plate disposed between the bottom sole and the midsole, the carbon fiber plate defining a plurality of fingers that extend forward in a longitudinal direction of the training shoe, the plurality of fingers including three or more fingers to promote medial-lateral flexibility of the carbon fiber plate as claimed insofar as the combined sole structure and panel would be a training shoe insofar as it would be a shoe that is capable of use while training; moreover, the plurality of fingers would extend forward in a longitudinal direction of the training shoe in the same manner that they extend forward in a longitudinal direction of the sole structure of Paterson Figs. 6a-6b.
Regarding claim 2:
Paterson in view of Byrd teach The training shoe of claim 1, as set forth above.
The modified Paterson further meets the limitation wherein a width of the carbon fiber plate varies in the longitudinal direction of the training shoe and reaches a maximum at a longitudinal position underneath a front portion of the midsole corresponding to the person's forefoot.
(The modified Paterson comprises the carbon fiber plate of Fig. 6c; refer to above treatment of claim 1. The carbon fiber plate of Fig. 6c comprises a width as claimed; see annotated Fig. 6c – b below; although the midsole itself is not seen in Fig. 6c, the maximum identified in annotated Fig. 6c – b below is provided underneath a front portion of the midsole corresponding to the person’s forefoot in the same way that the similar carbon fiber reinforcement structure of Figs. 6a-6b is provided relative to the front portion of the midsole of Figs. 6a-6b :
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Regarding claim 3:
Paterson in view of Byrd teach The training shoe of claim 1, as set forth above.
The modified Paterson further meets the limitation wherein a bottom surface of the midsole defines a recess in which the carbon fiber plate is disposed.
(Paterson Figs. 6a-6b show carbon fiber reinforcing structure 620 disposed in a recess defined in a bottom surface of the midsole (as evidenced in the section view of Fig. 6b wherein each of fingers 621, 622, 623, 624 is disposed in the recess); Paterson is modified so as to be provided with the reinforcing plate of Fig. 6c (refer to above treatment of claim 1) such that the carbon fiber plate of the modified Paterson is disposed in the recess in the same way that the fingers of Figs. 6a-6b are disposed in the recess.)
Regarding claim 4:
Paterson in view of Byrd teach The training shoe of claim 3, as set forth above.
The modified Paterson further meets the limitation wherein the recess defines a plurality of fingers corresponding to the plurality of fingers of the carbon fiber plate.
(Paterson Figs. 6a-6b show carbon fiber reinforcing structure 620 disposed in a recess defined in a bottom surface of the midsole (as evidenced in the section view of Fig. 6b wherein each of fingers 621, 622, 623, 624 is disposed in the recess) wherein said recess defines a plurality of fingers: a first finger accommodating finger 621 of the carbon fiber reinforcing structure; a second finger accommodating finger 622 of the carbon fiber reinforcing structure; a third finger accommodating finger 623 of the carbon fiber reinforcing structure; a fourth finger accommodating finger 624 of the carbon fiber reinforcing structure; Paterson is modified so as to be provided with the reinforcing plate of Fig. 6c (refer to above treatment of claim 1) such that the carbon fiber plate of the modified Paterson—and its fingers—is/are disposed in the recess in the same way that the fingers of Figs. 6a-6b are disposed in the recess.)
Regarding claim 10:
Paterson in view of Byrd teach The training shoe of claim 1, as set forth above.
The modified Paterson further meets the limitation wherein an outermost pair of the plurality of fingers curve inward as they extend forward in the longitudinal direction of the training shoe.
(The modified Paterson comprises the carbon fiber plate of Fig. 6c; refer to above treatment of claim 1. The carbon fiber plate of Fig. 6c comprises an outermost pair as claimed; see annotated Fig. 6c – c below:
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Regarding claim 21:
Paterson in view of Byrd teach The training shoe of claim 1, as set forth above.
The modified Paterson further meets the limitation wherein the plurality of fingers includes four or more fingers.
(Paterson is modified so as to be provided with the reinforcing plate of Fig. 6c (refer to above treatment of claim 1) such that the plurality of fingers of the modified Paterson is the four fingers of Fig. 6c; refer to above treatment of claim 1 identifying the four fingers.)
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Paterson, EP-3868243-A1, newly cited] and [Byrd, US 7,213,354, previously cited] as applied to claim 3 above and further in view of [Liebeno, US 2015/0223563, previously cited].
Regarding claim 5:
Paterson in view of Byrd teach The training shoe of claim 3, as set forth above.
Paterson further discloses wherein the midsole comprises a first material in a front portion of the midsole corresponding to the person's forefoot, the recess being formed in the first material (Figs. 6a-6b).
Paterson does not expressly disclose the midsole comprising a first material in a front portion of the midsole corresponding to the person’s forefoot and a firmer second material in a rear portion of the midsole corresponding to the person’s heel.
However, Liebeno teaches (Figs. 6-7) a midsole 600 (i.e. “midsole 600”; para 55) comprising a first material (the material within region 610) in a front portion of the midsole corresponding to the person’s forefoot (“toe, or ball of the foot, portion”; para 55; Figs. 6-7) and a firmer second material (the material within region 620; having “high degree of firmness 730” (para 55) which is higher than that of first material as is evidenced in Fig. 7 in comparing degree of firmness 730 to degree of firmness of 710 of the first material (para 55; Fig. 7)) in a rear portion of the midsole corresponding to the person’s heel (“heel portion...region...620”; para 55).
Liebeno further teaches that a “high degree of firmness provides greater support and may be precisely located on the midsole...based on a customer’s specifications” (para 55).
It 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 to have modified the modified Paterson such that its midsole comprises the first material in a front portion of the midsole corresponding to the person’s forefoot and a firmer second material in a rear portion of the midsole corresponding to the person’s heel, in order to provide greater support at the heel region of the midsole than the forefoot region of the midsole in accordance with some users’ preferences, as suggested by Liebeno (para 55).
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Paterson, EP-3868243-A1, newly cited], [Byrd, US 7,213,354, previously cited], and [Liebeno, US 2015/0223563, previously cited] as applied to claim 5 above, and further in view of [Gheorghian, US 2017/0231322, previously cited].
Regarding claim 6:
Paterson in view of Byrd and Liebeno teach The training shoe of claim 5, as set forth above.
Paterson does not expressly disclose wherein the first material comprises a thermoplastic elastomer.
However, Gheorghian teaches a midsole material that comprises a polyether block amide thermoplastic elastomer (“thermoplastic elastomer (e.g., polyether block amide)”; para 18). Gheorghian further teaches “the midsole portion 25 formed from a material that provides cushioning and absorbs/attenuates impact force during normal wear and/or athletic training or performance” (para 18).
It 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 to have modified the modified Paterson such that its first material comprises a polyether block amide thermoplastic elastomer in order to provide cushioning, and/or absorb/attenuate impact force during normal wear and/or athletic training or performance, as taught by Gheorghain (para 18).
Regarding claim 7:
Paterson in view of Byrd, Liebeno, and Gheorghain teach The training shoe of claim 6, as set forth above.
The modified Paterson as applied to claim 6 further meets the limitation wherein the thermoplastic elastomer comprises polyether block amide (refer to above treatment of claim 6 wherein the limitation is addressed).
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Paterson, EP-3868243-A1, newly cited], [Byrd, US 7,213,354, previously cited], and [Liebeno, US 2015/0223563, previously cited] as applied to claim 5 above, and further in view of [Turner, US 4,364,188, previously cited].
Regarding claim 8:
Paterson in view of Byrd and Liebeno teach The training shoe of claim 5, as set forth above.
Paterson does not expressly disclose wherein the second material comprises a closed-cell foam.
However, Turner teaches a midsole material comprising a closed-cell foam comprising ethylene-vinyl acetate (“foamed closed cell resilient ethylene-vinyl, acetate copolymer forms a particularly effective midsole since it provides a good combination of flexibility, shock absorption, cushioning and longevity”; col. 3 lines 51-54).
It 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 to have modified the modified Paterson such that its second material comprises a closed-cell foam comprising ethyene-vinyl aceate in order to provide a flexibility, shock absorption, cushioning, longevity, and/or a combination of flexibility, shock absorption, cushioning, and longevity to the midsole, as taught by Turner (col. 3 lines 51-54).
Regarding claim 9:
Paterson in view of Byrd, Liebeno, and Turner teach The training shoe of claim 8, as set forth above.
The modified Paterson as applied to claim 8 further meets the limitation wherein the closed-cell foam comprises ethylene-vinyl acetate (refer to above treatment of claim 8 wherein the limitation is addressed).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Paterson, EP-3868243-A1, newly cited] and [Byrd, US 7,213,354, previously cited] as applied to claim 1 above, and further in view of [Kittner, US 2006/0248752, previously cited].
Regarding claim 11:
Paterson in view of Byrd teach The training shoe of claim 1, as set forth above.
Paterson does not expressly disclose further comprising a thermoplastic polyurethane (TPU) sidewall disposed on at least a portion of the midsole and at least a portion of the one or more panels so as to define part of an external surface of the training shoe.
However, Kittner teaches a thermoplastic polyurethane (“thermoplastic polyurethane ("TPU")”; para 34) sidewall 20 (i.e. “heel counter 20”) configured to be disposed on a portion of a midsole and a portion of a panel so as to define part of an external surface of a shoe (configured to be “sandwiched between the upper and an outsole” and accordingly configured to be sandwiched between a panel and a midsole; “heel counter attached to the exterior surface of the heel” of an upper wherein heel counter 20 defines part of an external surface of a shoe as evidenced in Figs. 1 and 4).
Kittner further teaches the TPU sidewall “provides added rigidity and support which aids users during periods of physical activity, especially those activities involving quick movements and directional changes” (para 32).
It 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 to have modified the modified Paterson such that it is provided with a thermoplastic polyurethane (TPU) sidewall disposed on at least a portion of the midsole and at least a portion of the one or more panels so as to define part of an external surface of the training shoe in order to provide rigidity and/or support for the purpose of aiding users during periods of physical activity especially those involving quick movements and directional changes, as taught by Kittner (para 32).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Paterson, EP-3868243-A1, newly cited] and [Byrd, US 7,213,354, previously cited] as applied to claim 1 above, and further in view of [Halberstadt, US 5,678,327, previously cited].
Regarding claim 12:
Paterson in view of Byrd teach The training shoe of claim 1, as set forth above.
Paterson does not expressly disclose wherein the bottom sole comprises a transparent rubber.
However, Halberstadt teaches a bottom sole wherein the bottom sole comprises a transparent rubber covering a midsole feature (“For additional visual effect, the outsole portion covering the recessed area of the midsole could be molded from transparent rubber” (col. 8 lines 21-25)).
It 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 to have modified the modified Paterson such that its bottom sole comprises a transparent rubber in order to provide a visual effect to the shoe, as taught by Halberstadt (col. 8 lines 21-25).
Claim(s) 13-15 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Paterson, EP-3868243-A1, newly cited] in view of [Byrd, US 7,213,354, previously cited] and [Liebeno, US 2015/0223563, previously cited].
Regarding claim 13:
Paterson Figs. 6a-6b discloses:
a sole structure 600 comprising:
a bottom sole 660 (i.e. “outsole 660”; para 170);
a midsole 611 (i.e. “upper midsole part 611”; para 170) disposed above at least a portion of the bottom sole (Figs. 6a-6b), the midsole comprising a first material in a front portion of the midsole corresponding to a person’s forefoot (Figs. 6a-6b); and
a carbon fiber (para 66) reinforcing structure 620 disposed between the bottom sole and the front portion of the midsole (Figs. 6a-6b), defining a plurality of fingers 621, 622, 623, 624 that extend forward in a longitudinal direction (Figs. 6a-6b), the plurality of fingers including three or more fingers (i.e. the four fingers 621, 622, 623, 624) to promote medial-lateral flexibility of the carbon fiber reinforcing structure (para 18).
Paterson Figs. 6a-6b does not expressly disclose
a bottom sole;
a midsole disposed above at least a portion of the bottom sole, the midsole comprising a first material in a front portion of the midsole corresponding to a person’s forefoot; and
a carbon fiber plate disposed between the bottom sole and the front portion of the midsole, the carbon fiber plate defining a plurality of fingers that extend forward in a longitudinal direction, the plurality of fingers including three or more fingers to promote medial-lateral flexibility of the carbon fiber plate.
However and in further view of Paterson:
Paterson further teaches (Fig. 6c):
a carbon fiber (para 66) plate 620 (i.e. “reinforcing structure 620”; para 172; although numeral 620 is not provided in Fig. 6C, the plate 620 is depicted in Fig. 6c and comprises 621, 622, 623, 624, and 628) defining a plurality of fingers (see annotated Fig. 6c – a presented in above addressing of claim 1) that extend forward in a longitudinal direction (as in annotated Fig. 6c – a presented in above addressing of claim 1), the plurality of fingers including three or more fingers (plate of Fig. 6C comprises four fingers; refer to annotated Fig. 6c – a presented in above addressing of claim 1) to promote medial-lateral flexibility of the carbon fiber plate (para 18; para 172).
Paterson teaches the carbon fiber plate of Fig. 6c is “a modification of the reinforcing structure 620” of Figs. 6a-6b (para 172) wherein reinforcing members 621-624 are “connected...by a connecting member 628” (para 172) wherein such connection is configured to “provide some additional stability to the overall reinforcing structure provided by the reinforcing members, for example in the heel region where heel strike usually occurs. However, the connection provided by this connection member may be only supplemental in the sense that it does not impede, or at least not completely negate, the reinforcing members' ability to react and respond independently to the forces acting on them during a gait cycle, in particular not in the front half of the foot....The connecting member may, for example, connect several or all of the reinforcing members close to their rearward end, to improve the stability in this area (which maybe the midfoot- or heel area, for example, depending on the rearward extension of the reinforcing members.)” (paras 72-73).
It 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 to have modified the sole structure 600 of Paterson Figs. 6a-6b such that it is provided with the carbon fiber plate of Fig. 6c, the carbon fiber plate disposed between the bottom sole and the front portion of the midsole, the carbon fiber plate defining a plurality of fingers that extend forward in a longitudinal direction, the plurality of fingers including three or more fingers to promote medial-lateral flexibility of the carbon fiber plate in order to provide additional stability in the region of the sole structure at which the connecting member 628 is provided, as suggested by Paterson (paras 72-73).
The modified Paterson does not meet the limitation
A training shoe comprising:
a bottom sole;
a midsole disposed above at least a portion of the bottom sole, the midsole comprising a first material in a front portion of the midsole corresponding to a person’s forefoot;
one or more panels attached to one or both of the midsole and the bottom sole to define an enclosure for a person's foot; and
a carbon fiber plate disposed between the bottom sole and the front portion of the midsole, the carbon fiber plate defining a plurality of fingers that extend forward in a longitudinal direction of the training shoe, the plurality of fingers including three or more fingers to promote medial-lateral flexibility of the carbon fiber plate.
In further view of Paterson: the sole structures disclosed by Paterson are appropriate for use in a training shoe (para 11). Paterson is silent as to any express one or more panels attached to one or both of the midsole and the bottom sole to define an enclosure for a person's foot.
Nevertheless, Byrd teaches a panel (“upper 60”; col. 6 line 62) attached to a midsole 20 (“attached to the midsole 20”; col. 6 lines 62-63) and a bottom sole 40 (“attached to the...outsole 40”; col. 6 lines 62-63) to define an enclosure for a person’s foot (“defining a volume for enclosing a wearer’s foot”; col. 6 lines 63-64) in order to yield a training shoe (“article of footwear 10”; col. 6 lines 61-62, wherein the article of footwear 10 is capable of use whilst training such that it is a training shoe). In Byrd, panel 60, midsole 20, and bottom sole 40 are attached in such a way that a longitudinal direction of the sole structure 20, 40 of Byrd is a longitudinal direction of the shoe 10 of Byrd (see Fig. 6, for example).
Byrd further teaches the panel (i.e “upper”) “is designed to snugly and comfortably enclose the foot” (col. 1 lines 42-43).
It 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 to have modified the modified Paterson such that it is combined with a panel attached to its midsole and its bottom sole to define an enclosure for a person’s foot to yield a shoe and such that the longitudinal direction of its sole structure is the same as the longitudinal direction of the shoe, as in Byrd, in order to provide a wearer an opportunity to snugly and comfortably enclose his foot, as taught by Byrd (col. 4 lines 42-43).
In adopting the modification, one would arrive at A training shoe comprising: a bottom sole;
a midsole disposed above at least a portion of the bottom sole, the midsole comprising a first material in a front portion of the midsole corresponding to a person’s forefoot; one or more panels attached to one or both of the midsole and the bottom sole to define an enclosure for a person's foot; and a carbon fiber plate disposed between the bottom sole and the front portion of the midsole, the carbon fiber plate defining a plurality of fingers that extend forward in a longitudinal direction of the training shoe, the plurality of fingers including three or more fingers to promote medial-lateral flexibility of the carbon fiber plate insofar as the combined sole structure and panel would be a training shoe insofar as it would be a shoe that is capable of use while training; moreover, the plurality of fingers would extend forward in a longitudinal direction of the training shoe in the same manner that they extend forward in a longitudinal direction of the sole structure of Paterson Figs. 6a-6b.
Paterson does not expressly disclose the midsole comprising a first material in a front portion of the midsole corresponding to the person’s forefoot and a firmer second material in a rear portion of the midsole corresponding to the person’s heel.
However, Liebeno teaches (Figs. 6-7) a midsole 600 (i.e. “midsole 600”; para 55) comprising a first material (the material within region 610) in a front portion of the midsole corresponding to the person’s forefoot (“toe, or ball of the foot, portion”; para 55; Figs. 6-7) and a firmer second material (the material within region 620; having “high degree of firmness 730” (para 55) which is higher than that of first material as is evidenced in Fig. 7 in comparing degree of firmness 730 to degree of firmness of 710 of the first material (para 55; Fig. 7)) in a rear portion of the midsole corresponding to the person’s heel (“heel portion...region...620”; para 55).
Liebeno further teaches that a “high degree of firmness provides greater support and may be precisely located on the midsole...based on a customer’s specifications” (para 55).
It 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 to have modified the modified Paterson such that its midsole comprises the first material in a front portion of the midsole corresponding to the person’s forefoot and a firmer second material in a rear portion of the midsole corresponding to the person’s heel, in order to provide greater support at the heel region of the midsole than the forefoot region of the midsole in accordance with some users’ preferences, as suggested by Liebeno (para 55).
Regarding claim 14:
Paterson in view of Byrd and Liebeno teach The training shoe of claim 13, as set forth above.
The modified Paterson further meets the limitation wherein a bottom surface of the midsole defines a recess in which the carbon fiber plate is disposed.
(Paterson Figs. 6a-6b show carbon fiber reinforcing structure 620 disposed in a recess defined in a bottom surface of the midsole (as evidenced in the section view of Fig. 6b wherein each of fingers 621, 622, 623, 624 is disposed in the recess); Paterson is modified so as to be provided with the reinforcing plate of Fig. 6c (refer to above treatment of claim 13) such that the carbon fiber plate of the modified Paterson is disposed in the recess in the same way that the fingers of Figs. 6a-6b are disposed in the recess.)
Regarding claim 15:
Paterson in view of Byrd and Liebeno teach The training shoe of claim 14, as set forth above.
The modified Paterson further meets the limitation wherein the recess defines a plurality of fingers corresponding to the plurality of fingers of the carbon fiber plate.
(Paterson Figs. 6a-6b show carbon fiber reinforcing structure 620 disposed in a recess defined in a bottom surface of the midsole (as evidenced in the section view of Fig. 6b wherein each of fingers 621, 622, 623, 624 is disposed in the recess) wherein said recess defines a plurality of fingers: a first finger accommodating finger 621 of the carbon fiber reinforcing structure; a second finger accommodating finger 622 of the carbon fiber reinforcing structure; a third finger accommodating finger 623 of the carbon fiber reinforcing structure; a fourth finger accommodating finger 624 of the carbon fiber reinforcing structure; Paterson is modified so as to be provided with the reinforcing plate of Fig. 6c (refer to above treatment of claim 13) such that the carbon fiber plate of the modified Paterson—and its fingers—is/are disposed in the recess in the same way that the fingers of Figs. 6a-6b are disposed in the recess.)
Regarding claim 22:
Paterson in view of Byrd teach The training shoe of claim 13, as set forth above.
The modified Paterson further meets the limitation wherein the plurality of fingers includes four or more fingers.
(Paterson is modified so as to be provided with the reinforcing plate of Fig. 6c (refer to above treatment of claim 13) such that the plurality of fingers of the modified Paterson is the four fingers of Fig. 6c; refer to above treatment of claim 13 identifying the four fingers.)
Claim(s) 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Paterson, EP-3868243-A1, newly cited], [Byrd, US 7,213,354, previously cited], and [Liebeno, US 2015/0223563, previously cited] as applied to claim 13 above, and further in view of [Gheorghian, US 2017/0231322, previously cited].
Regarding claim 16:
Paterson in view of Byrd and Liebeno teach The training shoe of claim 13, as set forth above.
Paterson does not expressly disclose wherein the first material comprises a thermoplastic elastomer.
However, Gheorghian teaches a midsole material that comprises a polyether block amide thermoplastic elastomer (“thermoplastic elastomer (e.g., polyether block amide)”; para 18). Gheorghian further teaches “the midsole portion 25 formed from a material that provides cushioning and absorbs/attenuates impact force during normal wear and/or athletic training or performance” (para 18).
It 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 to have modified the modified Paterson such that its first material comprises a polyether block amide thermoplastic elastomer in order to provide cushioning, and/or absorb/attenuate impact force during normal wear and/or athletic training or performance, as taught by Gheorghain (para 18).
Regarding claim 17:
Paterson in view of Byrd, Liebeno, and Gheorghain teach The training shoe of claim 16, as set forth above.
The modified Paterson as applied to claim 16 further meets the limitation wherein the thermoplastic elastomer comprises polyether block amide (refer to above treatment of claim 16 wherein the limitation is addressed).
Claim(s) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Paterson, EP-3868243-A1, newly cited], [Byrd, US 7,213,354, previously cited], and [Liebeno, US 2015/0223563, previously cited] as applied to claim 13 above, and further in view of [Turner, US 4,364,188, previously cited].
Regarding claim 18:
Paterson in view of Byrd and Liebeno teach The training shoe of claim 13, as set forth above.
Paterson does not expressly disclose wherein the second material comprises a closed-cell foam.
However, Turner teaches a midsole material comprising a closed-cell foam comprising ethylene-vinyl acetate (“foamed closed cell resilient ethylene-vinyl, acetate copolymer forms a particularly effective midsole since it provides a good combination of flexibility, shock absorption, cushioning and longevity”; col. 3 lines 51-54).
It 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 to have modified the modified Paterson such that its second material comprises a closed-cell foam comprising ethyene-vinyl aceate in order to provide a flexibility, shock absorption, cushioning, longevity, and/or a combination of flexibility, shock absorption, cushioning, and longevity to the midsole, as taught by Turner (col. 3 lines 51-54).
Regarding claim 19:
Paterson in view of Byrd, Liebeno, and Turner teach The training shoe of claim 18, as set forth above.
The modified Paterson as applied to claim 18 further meets the limitation wherein the closed-cell foam comprises ethylene-vinyl acetate (refer to above treatment of claim 18 wherein the limitation is addressed).
Claim(s) 20 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Paterson, EP-3868243-A1, newly cited] in view of [Byrd, US 7,213,354, previously cited].
Regarding claim 20:
Paterson Figs. 6a-6b discloses:
a sole structure 600 comprising:
a bottom sole 660 (i.e. “outsole 660”; para 170);
a midsole 611 (i.e. “upper midsole part 611”; para 170) disposed above at least a portion of the bottom sole (Figs. 6a-6b); and
a carbon fiber (para 66) reinforcing structure 620 disposed in a recess defined in a bottom surface of the midsole (as evidenced in the section view of Fig. 6b wherein each of fingers 621, 622, 623, 624 is disposed in the recess), defining a plurality of fingers 621, 622, 623, 624 that extend forward in a longitudinal direction (Figs. 6a-6b), the plurality of fingers including three or more fingers (i.e. the four fingers 621, 622, 623, 624) to promote medial-lateral flexibility of the carbon fiber reinforcing structure (para 18).
Paterson Figs. 6a-6b does not expressly disclose
a bottom sole;
a midsole disposed above at least a portion of the bottom sole; and
a carbon fiber plate disposed in a recess defined in a bottom surface of the midsole, the carbon fiber plate defining a plurality of fingers that extend forward in a longitudinal direction, the plurality of fingers including three or more fingers to promote medial-lateral flexibility of the carbon fiber plate.
However and in further view of Paterson:
Paterson further teaches (Fig. 6c):
a carbon fiber (para 66) plate 620 (i.e. “reinforcing structure 620”; para 172; although numeral 620 is not provided in Fig. 6C, the plate 620 is depicted in Fig. 6c and comprises 621, 622, 623, 624, and 628) defining a plurality of fingers (see annotated Fig. 6c – a presented in above addressing of claim 1) that extend forward in a longitudinal direction (as in annotated Fig. 6c – a presented in above addressing of claim 1), the plurality of fingers including three or more fingers (plate of Fig. 6C comprises four fingers; refer to annotated Fig. 6c – a presented in above addressing of claim 1) to promote medial-lateral flexibility of the carbon fiber plate (para 18; para 172).
Paterson teaches the carbon fiber plate of Fig. 6c is “a modification of the reinforcing structure 620” of Figs. 6a-6b (para 172) wherein reinforcing members 621-624 are “connected...by a connecting member 628” (para 172) wherein such connection is configured to “provide some additional stability to the overall reinforcing structure provided by the reinforcing members, for example in the heel region where heel strike usually occurs. However, the connection provided by this connection member may be only supplemental in the sense that it does not impede, or at least not completely negate, the reinforcing members' ability to react and respond independently to the forces acting on them during a gait cycle, in particular not in the front half of the foot....The connecting member may, for example, connect several or all of the reinforcing members close to their rearward end, to improve the stability in this area (which maybe the midfoot- or heel area, for example, depending on the rearward extension of the reinforcing members.)” (paras 72-73).
It 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 to have modified the sole structure 600 of Paterson Figs. 6a-6b such that it is provided with the carbon fiber plate of Fig. 6c, the carbon fiber plate disposed in a recess defined in a bottom surface of the midsole, the carbon fiber plate defining a plurality of fingers that extend forward in a longitudinal direction, the plurality of fingers including three or more fingers to promote medial-lateral flexibility of the carbon fiber plate in order to provide additional stability in the region of the sole structure at which the connecting member 628 is provided, as suggested by Paterson (paras 72-73).
The modified Paterson does not meet the limitation
A training shoe comprising:
a bottom sole;
a midsole disposed above at least a portion of the bottom sole;
one or more panels attached to one or both of the midsole and the bottom sole to define an enclosure for a person's foot; and
a carbon fiber plate disposed in a recess defined in a bottom surface of the midsole, the carbon fiber plate defining a plurality of fingers that extend forward in a longitudinal direction of the training shoe, the plurality of fingers including three or more fingers to promote medial-lateral flexibility of the carbon fiber plate.
In further view of Paterson: the sole structures disclosed by Paterson are appropriate for use in a training shoe (para 11). Paterson is silent as to any express one or more panels attached to one or both of the midsole and the bottom sole to define an enclosure for a person's foot.
Nevertheless, Byrd teaches a panel (“upper 60”; col. 6 line 62) attached to a midsole 20 (“attached to the midsole 20”; col. 6 lines 62-63) and a bottom sole 40 (“attached to the...outsole 40”; col. 6 lines 62-63) to define an enclosure for a person’s foot (“defining a volume for enclosing a wearer’s foot”; col. 6 lines 63-64) in order to yield a training shoe (“article of footwear 10”; col. 6 lines 61-62, wherein the article of footwear 10 is capable of use whilst training such that it is a training shoe). In Byrd, panel 60, midsole 20, and bottom sole 40 are attached in such a way that a longitudinal direction of the sole structure 20, 40 of Byrd is a longitudinal direction of the shoe 10 of Byrd (see Fig. 6, for example).
Byrd further teaches the panel (i.e “upper”) “is designed to snugly and comfortably enclose the foot” (col. 1 lines 42-43).
It 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 to have modified the modified Paterson such that it is combined with a panel attached to its midsole and its bottom sole to define an enclosure for a person’s foot to yield a shoe and such that the longitudinal direction of its sole structure is the same as the longitudinal direction of the shoe, as in Byrd, in order to provide a wearer an opportunity to snugly and comfortably enclose his foot, as taught by Byrd (col. 4 lines 42-43).
In adopting the modification, one would arrive at A training shoe comprising: a bottom sole; a midsole disposed above at least a portion of the bottom sole; one or more panels attached to one or both of the midsole and the bottom sole to define an enclosure for a person's foot; and a carbon fiber plate disposed in a recess defined in a bottom surface of the midsole, the carbon fiber plate defining a plurality of fingers that extend forward in a longitudinal direction of the training shoe, the plurality of fingers including three or more fingers to promote medial-lateral flexibility of the carbon fiber plate as claimed insofar as the combined sole structure and panel would be a training shoe insofar as it would be a shoe that is capable of use while training; moreover, the plurality of fingers would extend forward in a longitudinal direction of the training shoe in the same manner that they extend forward in a longitudinal direction of the sole structure of Paterson Figs. 6a-6b.
Regarding claim 23:
Paterson in view of Byrd teach The training shoe of claim 20, as set forth above.
The modified Paterson further meets the limitation wherein the plurality of fingers includes four or more fingers.
(Paterson is modified so as to be provided with the reinforcing plate of Fig. 6c (refer to above treatment of claim 20) such that the plurality of fingers of the modified Paterson is the four fingers of Fig. 6c; refer to above treatment of claim 20 identifying the four fingers.)
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 GRADY A NUNNERY whose telephone number is (571)272-2995. The examiner can normally be reached 8-5 M-F.
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/GRADY ALEXANDER NUNNERY/Examiner, Art Unit 3732