DETAILED ACTION
Claims 1-3, 5-13, 15-20 are pending. Claims 1, 3, 6, 7, 11, 13, 16, and 17 are amended.
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
This office action is responsive to the amendment filed on July 28, 2026. As directed by the amendment: claims 1, 3, 6, 7, 11, 13, 16, and 17 have been amended,. Thus, claims 1-3, 5-13, 15-20 are presently pending in this application with claims 3, 6, 7, 13, 16, and 17 being withdrawn from consideration.
Applicant’s amendment to the claims has not overcome the 35 USC §103 rejections.
Response to Arguments
Applicant's arguments filed July 28, 2026 have been fully considered but they are not persuasive.
Applicant argues that Lyden’s flex joints are designed to respond to the wearer’s foot movement during athletic activities, not to respond to bladder constriction in an upper. The Examiner does not disagree. However, the Examiner suggests that the design purpose of Lyden’s flex joints does not detract from the sole’s ability to flex when the upper is constricted.
Applicant argues that Lyden’s flex joints are passive structural features and are not configured to respond or be actuated by a bladder system in the upper. While the Examiner agrees that Lyden’s footwear does not discuss an upper with constriction, the Examiner asserts that no such discussion is necessary. The present pending application does not describe any particular material for the sole structure, depth of the grooves, or spacing of the grooves in order to achieve the ability to move from a relaxed state to an engaged state. Rather, they are “configured to move between a relaxed state and an engaged state” (para. 0046). This statement, however, does not provide any structure beyond grooves that permits the particular movement between an engaged and relaxed state. How does Applicant’s sole work, if not by including grooves in the forefoot?
Based on Applicant’s disclosure, the Examiner submits that the modified footwear of Bishop and Lyden inherently results in a sole that includes flex grooves that are drawn apart when the upper is in a constricted state. This is because the combination of Lyden and Bishop includes all of the structural features of the present Application. If Applicant continues to allege that the combination does not result in the claimed outcome Applicant is free to describe how Applicant’s invention works if it is not based on the grooves. What structure is different between the combination of Bishop/Lyden and the present application?
Applicant further argues that the modification lacks a reasoned basis because Lyden addresses a different problem. That Lyden addresses a sole issue and Bishop relates to an upper issue does not indicate that Bishop would not benefit from the sole of Lyden. Indeed, Lyden describes that the flex joints make effective use of other joints and muscles in the foot important to stability and that the enhanced flex joint patterns can permit the entire forefoot portion to resemble the natural barefoot condition during athletic activities (col. 6, ll. 55-60). These benefits are helpful to Bishop for the same reasons they are helpful to Lyden. That Bishop is silent regarding the fit of the sole does not detract from the benefits listed in Lyden.
Applicant further alleges that Bishop does not identify a need for increase forefoot articulation. The Examiner is unaware of any requirement that the prior art ready for improvement (i.e., Bishop) must recognize the need for improvement, and Applicant cites not case law to support the position to the contrary.
Applicant argues that there is no reason why one would have modified Bishop with the grooves in Lyden to produce the claimed bladder-driven expansion. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). That is, the Examiner does not suggest modifying Bishop with Lyden in order to provide the bladder-driven expansion, but rather one would modify Bishop in order to make effective use of other joints and muscles in the foot important to stability and that the enhanced flex joint patterns can permit the entire forefoot portion to resemble the natural barefoot condition during athletic activities (col. 6, ll. 55-60).
Applicant next argues that the proposed modification would not have had a reasonable expectation of producing the claimed result. The Examiner disagrees. The proposed modification includes substantially the same structure as present in the claims or specification of the present application. The Examiner does not dispute that the modification places Lyden’s forefoot grooves beneath Bishop’s fit-adjustment upper, but does disagree that the claimed upper-to-sole actuation would be absent. It is reasonable to presume that when the upper is expanded, the flex grooves compress and when the upper is constricted, the flex grooves expand, as support for said presumption is found in the use of like materials (i.e. bladder, upper attachment) with like attachment. The burden is upon Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594.
Next, Applicant argues that the functional relationship between Lyden’s joints and Bishop’s constricted upper is not taught or suggest by either reference and therefore the limitation is not met. The Examiner disagrees. While Lyden is silent regarding the functional relationship, the Examiner asserts that all that is required for the functional relationship to exist is for disclosed structure to be in combined claims. The Examiner asserts that all of the structure disclosed in the present application is indeed present in the Bishop/Lyden combination and thus the claim limitations are met.
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 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) 1-2, 5, 8-12, 15 and 18-20 is/are rejected under 35 U.S.C. 103 as being obvious over Bishop et al. (US 20220330657) in view of Lyden (US 5384973).
Regarding claim 1, Bishop describes an article of footwear (10) comprising:
an upper (upper 100) including a bladder (bladder 132) defining an interior void (interior void 134), the bladder movable from an expanded state to a constricted state when fluid is removed from the interior void (relaxed and constricted, para. 0050, vacuum, para. 0075); and
a sole structure (sole structure 200) including at least one flex groove (see annotated Fig. 1A), flex grooves movable from a relaxed state to an expanded state in response to movement of the bladder from the expanded state to the constricted state (is attached in the same manner as that of the present application, see Figs. 6A-6B compared to present Application 2A-2B,
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and the bladder functions in the same manner, see paras. 0049-0063 of Bishop describing the upper bladder compared to 0049-0058 of the present application describing the bladder configuration, para. 0045 of Bishop describing the upper attached to the sole, the present application fails to disclose a material for the sole structure so the material appears to not be critical or relevant, thus it is inherent that when the upper is expanded, the flex grooves compress and when the upper is constricted, the flex grooves expand, it is reasonable to presume so, as support for said presumption is found in the use of like materials (i.e. bladder, upper attachment) with like attachment. The burden is upon Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. If Applicant argues that a sole structure with similar groove structure would not function in a similar manner then Applicant is invited to provide differences between the structure of the present application that enable this difference to occur.
The claim appears to be claiming simple tension and compression, footwear will experience tension on the sole (for example during walking) as the sole bends, this also causes compression within the upper as the top portion of the sole will be compressed which transfers to the upper, the same will occur in the reverse situation, since the upper is attached to the sole and the sole includes grooves, when the upper constricts, so too will the upper portion of the sole that it is attached to the upper which will thus cause the opposite side to expand).
Bishop does not explicitly describe that the sole structure includes a plurality of flex grooves extending along respective longitudinal axes in a direction substantially perpendicular to a longitudinal axis of the sole structure and defining a plurality of flex regions, each flex region disposed between two flex grooves of the plurality of flex grooves, the plurality of flex grooves and the plurality of flex regions disposed in the forefoot region of the sole structure and that the constricted state applying a force on the sole structure causing the plurality of flex grooves to be drawn apart from one another and causing an anterior end of the sole structure to flex upward a greater distance than a posterior end of the sole structure.
In related art for sole structures, Lyden describes the sole structure (sole 115) includes a plurality of flex grooves (flex joints 119-121, same structure as that of sole 65, col. 10, ll. 53-55) extending along respective longitudinal axes in a direction substantially perpendicular (are substantially perpendicular to the longitudinal axis) to a longitudinal axis of the sole structure (see annotated Fig. 5) and defining a plurality of flex regions (see annotated Fig. 5), each flex region disposed between two flex grooves of the plurality of flex grooves, the plurality of flex grooves and the plurality of flex regions disposed in the forefoot region (are in the forefoot) of the sole structure and that the constricted state applying a force on the sole structure causing the plurality of flex grooves to be drawn apart from one another and causes an anterior end of the sole structure to flex upward a greater distance than a posterior end of the sole structure.
It would have been obvious to a person having ordinary skill in the art prior to the time of filing the instant application to modify the footwear of Bishop to include the sole structure configuration of Lyden in order to make effective use of other joints and muscles in the foot important to stability as well as to permit the entire forefoot portion to resemble the natural barefoot condition during athletic activities (Lyden, col. 6, ll. 56-60). The modification thus includes grooves that extend laterally along the forefoot region of the footwear. The presence of the grooves will result in the same outcome as claimed. That is, in a constricted state the sole structure will move upwards due to the presence of the grooves.
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Regarding claim 2, Bishop as modified as modified describes the article of footwear of Claim 1, wherein flex grooves of the plurality of flex grooves are formed in a ground-engaging surface of the sole structure (see Figs. 7-9 depicting how the grooves can be made, including outsole 94, Lyden).
Regarding claim 5, Bishop as modified describes the article of footwear of Claim 1, wherein the flex grooves of the plurality of flex grooves are formed in a sidewall of the sole structure (is in the sidewall, see Fig. 5, groove extends entirely across the sole, Lyden, see also Fig. 25 depicting a side view of a groove).
Regarding claim 8, Bishop as modified describes article of footwear of Claim 1, further comprising a resilient member (compressible component 136) disposed within the interior void.
Regarding claim 9, Bishop as modified describes the article of footwear of Claim 8, wherein the resilient member biases the bladder into the expanded state (toward the expanded state, para. 0075).
Regarding claim 10, Bishop as modified describes the article of footwear of Claim 9, wherein the resilient member (136) is formed from foam (foam, para. 0074).
Regarding claim 11, Bishop describe an article of footwear (10) comprising:
an upper (upper 100) including a bladder (bladder 132) defining an interior void (interior void 134), the bladder movable from an expanded state to a constricted state when fluid is removed from the interior void (relaxed and constricted, para. 0050, vacuum, para. 0075); and
a sole structure (sole structure 200) movable from a relaxed state to an expanded state in response to movement of the bladder from the expanded state to the constricted state (is attached in the same manner as that of the present application, see Figs. 6A-6B compared to present Application 2A-2B,
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and the bladder functions in the same manner, see paras. 0049-0063 of Bishop describing the upper bladder compared to 0049-0058 of the present application describing the bladder configuration, para. 0045 of Bishop describing the upper attached to the sole, the present application fails to disclose a material for the sole structure so the material appears to not be critical or relevant, thus it is inherent that when the upper is expanded, the flex grooves compress and when the upper is constricted, the flex grooves expand, it is reasonable to presume so, as support for said presumption is found in the use of like materials (i.e. bladder, upper attachment) with like attachment. The burden is upon Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. If Applicant argues that a sole structure with similar groove structure would not function in a similar manner then Applicant is invited to provide differences between the structure of the present application that enable this difference to occur.
The claim appears to be claiming simple tension and compression, footwear will experience tension on the sole (for example during walking) as the sole bends, this also causes compression within the upper as the top portion of the sole will be compressed which transfers to the upper, the same will occur in the reverse situation, since the upper is attached to the sole and the sole includes grooves, when the upper constricts, so too will the upper portion of the sole that it is attached to the upper which will thus cause the opposite side to expand).
Bishop does not explicitly describe that the sole structure includes at least three flex grooves formed in a sidewall of the sole structure and defining at least two flex regions, each flex region disposed between two flex grooves of the at least three flex grooves, the at least three flex grooves and the at least two flex regions disposed in a forefoot region of the sole structure and extending along respective longitudinal axes in a direction substantially perpendicular to a longitudinal axis of the sole structure, and that the constricted state applying a force on the sole structure causing the plurality of flex grooves to be drawn apart from one another and causes an anterior end of the sole structure to flex upward a greater distance than a posterior end of the sole structure.
In related art for sole structures, Lyden describes the sole structure (sole 115) includes at least three flex grooves (flex joints 119-121) formed in a sidewall (are in the sidewall, see Fig. 5, groove extends entirely across the sole, Lyden, see also Fig. 25 depicting a side view of a groove) of the sole structure and defining at least two flex regions (see annotated Fig. 5), each flex region disposed between two flex grooves of the at least three flex grooves, the at least three flex grooves (119-121) and the at least two flex regions disposed in a forefoot region (are in the forefoot region) of the sole structure and extending along respective longitudinal axes in a direction substantially perpendicular to a longitudinal axis (grooves are substantially perpendicular to the longitudinal axis) of the sole structure, and that the constricted state applying a force on the sole structure causing the plurality of flex grooves to be drawn apart from one another and causes an anterior end of the sole structure to flex upward a greater distance than a posterior end of the sole structure.
It would have been obvious to a person having ordinary skill in the art prior to the time of filing the instant application to modify the footwear of Bishop to include the sole structure configuration of Lyden in order to make effective use of other joints and muscles in the foot important to stability as well as to permit the entire forefoot portion to resemble the natural barefoot condition during athletic activities (Lyden, col. 6, ll. 56-60).
Since the grooves of Lyden are in the forefoot and there are no grooves of Lyden in the rear portion of the sole structure, when the upper is in the constricted state, the upper would cause the anterior end of the sole structure to flex upward a greater distance than a posterior end of the sole structure. Since the upper is attached to the sole structure in the same manner as the present application, the sole structure would react in the same manner with a similar sole structure. There being no grooves in the rear of the sole structure would restrict the ability of the sole structure to flex upward in the rear.
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Regarding claim 12, Bishop describes the article of footwear of Claim 11, wherein the at least three flex grooves (grooves 119-121, Lyden) are formed in a ground-engaging surface of the sole structure (see Fig. 7-9, Lyden), the at least three flex grooves increasing in size in response to movement of the sole structure from the relaxed state to the expanded state (it is inherent that when the upper is expanded, the flex grooves compress and when the upper is constricted, the flex grooves expand).
Regarding claim 15, Bishop describes the article of footwear of Claim 11, wherein the at least three flex grooves (119-121, Lyden) increase in size in response to movement of the sole structure from the relaxed state to the expanded state (it is inherent that when the upper is expanded, the flex grooves compress and when the upper is constricted, the flex grooves expand).
Regarding claim 18, Bishop describes the article of footwear of Claim 11, further comprising a resilient member (compressible component 136) disposed within the interior void.
Regarding claim 19, Bishop describes the article of footwear of Claim 18, wherein the resilient member biases the bladder into the expanded state (toward the expanded state, para. 0075).
Regarding claim 20, Bishop describe the article of footwear of Claim 19, wherein the resilient member (136) is formed from foam (foam, para. 0074).
Conclusion
THIS ACTION IS MADE FINAL. 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 PATRICK J LYNCH whose telephone number is (571)272-1145. The examiner can normally be reached on M-Th, Alt F: 8:00 AM-5:00 PM ET.
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, Clint Ostrup can be reached on 571-272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK J. LYNCH/Primary Examiner, Art Unit 3732
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