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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 19, 2025 has been entered.
Response to Amendment
The amendments filed with the written response received on November 19, 2025 have been considered and an action on the merits follows. As directed by the amendment, claims 1-3, 15, 21-22, 24, and 29 have been amended; claims 4-13, 16-17, 19-20, and 23 are canceled; and claims 30-31 have been added. Accordingly, claims 1-3, 14-15, 18, 21-22, and 24-31 are pending in this application, with an action on the merits to follow regarding claims 1-3, 14-15, 18, 21-22, and 24-31.
Claim Rejections - 35 USC § 112(b)
Claims 1 and 31 (and claims 2-3, 14-15, 18, 21-22, and 24-30 at least for depending from a rejected claim) are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is indefinite as it recites, “a support structure comprising (i) a forefoot portion that is fully detached or decoupled from the footbed, the insole component, and the midsole, (ii) a midfoot portion, and (iii) a heel portion that is riveted to the footbed, wherein the support structure comprises a free floating insert positioned within the channel, recess, or groove, wherein at least the forefoot portion of the support structure is configured to….” First, as this entire limitation is in one paragraph, without indents or separate sections, it is unclear if the forefoot portion is detached/decoupled from the midfoot portion and the heel portion or if the midfoot portion and the heel portion are portions of the support structure. Further, as the support structure is claimed as comprising a forefoot portion, etc., and a free floating insert, it appears the free floating insert is in addition to the forefoot, midfoot, and heel portions, however this is unclear as in the specification, the free floating insert is synonymous with the support structure. Further, it is unclear how the insert is free floating when it is riveted to the footbed. Examiner respectfully suggests amending to recite, “a support structure comprising (i) a forefoot portion wherein the forefoot portion is fully detached or decoupled from the footbed, the insole component, and the midsole, wherein the support structure is
Claim 31 is indefinite as it recites, “wherein the low friction coating is applied to an upper surface of the support structure.” As claim 28 recites, “further comprising a low friction coating applied to a surface of the support structure”, it is unclear if “an upper surface” is referring to “a surface” recited in claim 28 or if the low friction coating is applied to more than one surface. Examiner has interpreted the limitation to mean that the upper surface of claim 31 is referring to the surface of claim 28.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 29 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 29 recites, “wherein the heel portion of the support structure is detached or decoupled from the insole component”. However, claim 1 already recites, “a support structure comprising (i) a forefoot portion that is fully detached or decoupled from the footbed, the insole component, and the midsole” and therefore already limits the heel portion of the support structure from being attached or coupled to the insole component. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-3, 18, 21-22, 24-27, and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dombrow (US 2023/0172313) in view of Lyden (US 2003/0069807).
Regarding claim 1, Dombrow discloses a golf shoe (10, Figs. 6-12, Examiner notes all statements of intended use such as “golf” (i.e. a shoe for golf) have been fully considered. However, they are deemed to not impose any structural limitations that distinguish over the cited references), comprising: an upper (12) and a sole assembly (14/36) connected to the upper (see Fig. 17), the sole assembly comprising a midsole (36) and an outsole (14); a footbed (38) disposed within an interior region of the upper (see Fig. 11) to support a subject’s foot when the subject’s foot is positioned within the golf shoe (as the footbed would be below the user’s foot when the shoe is worn), wherein the footbed comprises a channel, recess, or a groove (44) formed within and extending along a bottom surface of the footbed (see Figs. 7-8 and paras. 0074-0075); and a support structure (40) comprising (i) a forefoot portion (see annotated Fig. 8) that is fully detached or decoupled from the footbed, the insole component, and the midsole (as disclosed in paras. 0073 and 0076, 40 is only attached/coupled by mounting plug 42 in the heel portion, see para. 0076), (ii) a midfoot portion, and (iii) a heel portion (see annotated Fig. 8) that is fixed to the footbed (via 42), wherein the support structure comprises a free floating insert positioned within the channel, recess, or groove (44, see Figs. 7-8 and paras. 0074-0075 and considered free floating as 40 is only fixed by plug 42, see para. 0073 and is therefore capable of movement as it can flex independently of the adjacent layer; further Examiner notes the support structure 40 can even be cut to achieve desired flexion properties, see para. 0080), wherein the at least the forefoot portion of the support structure is configured to move freely through the channel, recess, or groove and flex independently of the footbed, the insole component, and the midsole during a golf-related action (as 40 is only fixed in the heel portion by plug 42, a remainder of 40, including the forefoot portion, is capable of freely moving as disclosed in para. 0073 where it can flex independently since it is not attached; further shown in para. 0080 where it can be cut to achieve desired flexion properties and is therefore capable of freely moving and flexing independently of the other layers similar to Applicant’s structure).
The embodiment of Fig. 6-12 of Dombrow does not expressly disclose an insole component provided below the footbed and wherein the support structure is fixed to the footbed by riveting.
The embodiment of Figs. 13-17 teaches an insole (60) provided below the footbed (see Fig. 17).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add an insole to the shoe of Dombrow in order to finish the upper so that it is easily attached to the sole, forming a complete and useable shoe.
The modified shoe of Dombrow does not teach wherein the support structure is fixed to the footbed by riveting (as it is fixed to the sole structure by plug 42).
Lyden teaches footwear with a sole structure (51) fixed to a sole element by a fastener (29, see paras. 0833-0834) wherein the fastener can be a rivet (such as a snap rivet, see para. 0662).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the fastener of the modified shoe of Dombrow with the fastener as taught by Lyden, as a simple substitution of one well known fastener for another in order to yield the predictable result of securely fastening the support structure and footbed in a releasable and rotatable manner. See MPEP 2143 B and substitution equivalency in para. 0662 of Lyden. Further Examiner notes, para. 0085 of this instant application recites, “In some cases, the fastener 430 may comprise, for example, a clip, a rivet, a snap fit mechanism, or any other type of mechanical fastener” and therefore Applicant does not have criticality for any particular type of fastener.
Regarding claim 2, the modified shoe of Dombrow discloses wherein the support structure is riveted to the footbed in a heel portion of the golf shoe (via 42 of Dombrow which was modified by Lyden to be a rivet, see Fig. 8 of Dombrow where this occurs in a heel portion of the support structure which also corresponds to a heel portion of the overall shoe).
Regarding claim 3, the modified shoe of Dombrow discloses wherein the midsole portion of the support structure is detached from the footbed (as disclosed in para. 0073 of Dombrow, 40 is not fixed to adjacent layers, and is only locked in place by mounting plug 42 which is in the heel portion, see para. 0076 and annotated Fig. 8).
Regarding claim 18, the modified shoe of Dombrow discloses wherein the support structure has a first orientation that provides a first flex characteristic and a second orientation that provides a second flex characteristic that is different than the first flex characteristic (see para. 0015 where the support structure 40 exhibits asymmetric flexion characteristics with different resistance to plantar flexion than to dorsiflexion, and therefore exhibits a first characteristic when in a plantar flexion orientation than when in a dorsiflexion orientation).
Regarding claim 21, the modified shoe of Dombrow discloses wherein the support structure is riveted to the footbed at a single attachment point (via 42 of Dombrow as modified by Lyden to be a rivet, as 42 of Dombrow can be considered a single fastener and therefore a single point of attachment).
Regarding claim 22, the modified shoe of Dombrow discloses wherein only the heel portion of the support structure is riveted to the footbed (at 42 of Dombrow as modified by Lyden to be a rivet, as disclosed in para. 0073 of Dombrow, 40 is not fixed to adjacent layers, and is only locked in place by mounting plug 42, see para. 0076).
Regarding claim 24, the modified shoe of Dombrow discloses wherein the midfoot portion of the support structure is detached from the insole component (as 40 is only attached to 38 via 42 which is in the heel region and when the insole component 60 is added, the support structure would sit within a depression 58 in the insole such as how it does in the midsole 36, see Fig. 12, all within the heel region).
Regarding claim 25, the modified shoe Dombrow discloses wherein the support structure is provided above the insole component and within the interior region of the upper (as seen in Figs. 16-17, 60 is below 40 and therefore when insole 60 is added to Figs. 11-12, it would be above the midsole 36 and below the support structure 40).
Regarding claim 26, the modified shoe of Dombrow discloses wherein the support structure comprises a rigid material or a semi-rigid material (para. 0072).
Regarding claim 27, the modified shoe of Dombrow discloses wherein the support structure comprises a deformable material or an elastic material (see para. 0072 where it is described as resiliently flexible and therefore exhibits elasticity and can deform by flexing).
Regarding claim 29, the modified shoe of Dombrow discloses wherein the heel portion of the support structure is detached or decoupled from the insole component (as 40 is only attached to 38 via 42 which is in the heel region and when the insole component 60 is added, the support structure would sit within a depression 58 in the insole such as how it does in the midsole 36, see Fig. 12, all within the heel region, but not physically attached or coupled to the insole component 60 as it would not be removable for quick changing).
Claim(s) 14-15 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combined references of Dombrow and Lyden as applied to claim 1 above, and further in view of Fini (US 6219942).
Regarding claim 14, the modified shoe of Dombrow discloses all the limitations of claim 1 above, but does not expressly disclose further comprising a foam material provided between the footbed and the support structure.
Fini teaches removable inner soles comprising a foam material (13) provided between the footbed (11) and the support structure (12).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a foam material between the footbed and the support structure of the modified shoe of Dombrow as taught by Fini in order to further tune shock absorbing characteristics of the footwear to provide maximum comfort and stability to a given wearer.
Regarding claim 15, the modified shoe of Dombrow discloses wherein the support structure is riveted to the footbed using a rivet (42 of Dombrow as modified by Lyden to be rivet) that is configured to extend through the foam material (13 of Fini) provided between the footbed and the support structure (similar to how fastener 8 of Fini extends through foam material 13).
Regarding claim 30, the modified show of Dombrow discloses wherein the foam material is positioned entirely within a heel region of the golf shoe (as 13 of Fini extends from the lateral to medial side and from the front end to the rear end, it is entirely within the heel region, i.e. it is positioned entirely across the heel region from the lateral side to the medial side and from the front of the heel region to the rear of the heel region).
Claim(s) 28 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combined references of Dombrow and Lyden, as applied to claim 1 above, and further in view of Nurse (US 9320318).
Regarding claim 28, the modified shoe of Dombrow discloses all the limitations of claim 1 above, but does not expressly disclose further comprising a low friction coating applied to a surface of the support structure.
Nurse teaches an articulated support structure (1520) within a recess (1504) comprising a low friction coating applied to a surface of the support structure (see col. 18, lines 20-43).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add a low friction coating to a surface of the support structure of the modified shoe of Dombrow, as taught by Nurse, “to reduce the coefficient of friction between the interfacing surfaces, to improve wear resistance” (see col. 18, lines 40-43 of Nurse).
When used in combination, as the low friction coating of Nurse is applied to the surface of the support structure that is within and faces the recess, when applied to the modified shoe of Dombrow, the low friction coating would also be on the surface that is within and faces the recess, i.e. the upper surface of support structure.
Regarding claim 31, the modified shoe of Dombrow discloses wherein the low friction coating is applied to an upper surface of the support structure (as explained above, when used in combination, as the low friction coating of Nurse is applied to the surface of the support structure that is within and faces the recess, when applied to the modified shoe of Dombrow, the low friction coating would also be on the surface that is within and faces the recess, i.e. the upper surface of support structure).
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Annotated Fig. 8 (Dombrow)
Response to Arguments
Applicant’s arguments filed November 19, 2025, with respect to the 35 USC 103 rejection of claim(s) 1 regarding the support structure’s ability to “slide freely” (Remarks, p. 5, lines 1-8), have been considered but are not persuasive.
First, Applicant argues the support structure (40) of Dombrow is retained by the protuberance(s) (46/64) to prevent the forefoot portion of the support structure from moving relative to the midsole and therefore Dombrow does not read on “wherein at least the forefoot portion of the support structure is configured to move freely through the channel, recess, or groove and flex independently of the footbed, the insole component, and the midsole during a golf-related action or movement” as recited in claim 1 (Remarks, p. 6, lines 1-8). Examiner respectfully disagrees. While para. 0075 of Dombrow does discloses that lateral movement of the support structure is prevented and mechanical interference between the midsole and the support structure during plantar flexion is dorsiflexion is avoided, Dombrow goes on to add that the shoe can be further adapted “even by the selective tailoring, such as by cutting or other physical adjustment, of the flexion plate to achieve desired flexion properties” (para. 0080). Therefore, as the support structure/flexion plate is only physically held in place at the heel with the protuberance, then at least the forefoot portion is capable of moving freely through the recess and flex independently from the footbed, the insole component and the midsole, just as the support structure of Applicant’s invention is.
Second, Applicant argues one of ordinary skill in the art would not be motivated to substitute the mounting plug of Dombrow with a permanent fastener such as a rivet since “Dombrow is intended to provide a releasable coupling so that the flexion plates disclosed in Dombrow can be non-destructive removed and replaced” (Remarks, p. 6 , 1st full para.). Examiner respectfully disagrees. Examiner notes the claim limitation only recites that the support structure “is riveted to the footbed” (claim 1) “using a rivet” (claim 15), but does not further claim any structure of the rivet. However, not all rivets are the same and not all rivets are permanent fasteners. In the rejection as laid out by Examiner, Dombrow has been modified by Lyden who teaches a sole structure fixed to a sole element by a snap rivet (see para. 0662 of Lyden). Snap rivets are not permanent fasteners. They are a type of rivet that can be pulled apart to separate the components and can be removed and reinstalled multiple times without being destroyed. Therefore, substituting the plug of Dombrow with the snap rivet of Lyden is a simple substitution of one well known fastener for another in order to yield the predictable result of securely fastening the support structure and footbed in a releasable and rotatable manner. See MPEP 2143 B and substitution equivalency in para. 0662 of Lyden. Further Examiner notes, para. 0085 of this instant application recites, “In some cases, the fastener 430 may comprise, for example, a clip, a rivet, a snap fit mechanism, or any other type of mechanical fastener” and therefore Applicant does not have criticality for any particular type of fastener.
Applicant submits that the dependent claims are patentable based on their dependencies from claim 1; however, as discussed in the rejection below and in the arguments above, claim 1 is not allowable over the prior art. Therefore, these arguments have not been found convincing and the rejections of the dependent claims have been maintained.
Conclusion
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/HEATHER MANGINE, Ph.D./ Primary Examiner, Art Unit 3732