DETAILED ACTION
Claims 1-3, 5-13, 15-20 are pending. Claims 1 and 11 are amended. Claims 4 and 14 are cancelled.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 16, 2026 has been entered.
Response to Amendment
This office action is responsive to the amendment filed on November 21, 2025. As directed by the amendment: claims 1, 5, 11, 12, and 15 have been amended. Claims 4 and 14 are cancelled. Thus, claims 1-3, 5-13, 15-20 are presently pending in this application with claims 3, 6, 7, 13, 16, and 17 being withdrawn from consideration.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 overcome the §103 claims however additional art is cited and all claims remain rejected under §103
Response to Arguments
Applicant’s arguments with respect to the claims have been 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. That is, applicant argues that Wills does not rectify the deficiencies of Bishop, which a different reference is now utilized to teach.
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 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 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 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).
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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, the constricted state 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, the constricted state 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
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.
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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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