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 06/08/2026 is acknowledged.
Claims 1-10 and 13-20 are presented.
Claims 8-10 and 13-20 remain withdrawn.
Dependent claims 4-6 are amended.
Claim 1 is presented in independent form and was previously presented.
The present Office action treats claims 1-7 on the merits.
The present Office action is a final rejection.
Response to Arguments
Applicant’s Remarks of 06/08/2026 are fully considered (see p. 5-8 of the reply).
Applicant argues:
Claim Objections
Claims 4, 5, and 6 are objected to due to informalities. Specifically, claim 4 is objected to for the recitation of "an upper." See Office action, p. 3. Claim 5 is objected to for the recitation of "the footwear." See id. Claim 6 is objected to for the recitation of "a sole." See id. To expedite prosecution, Applicant has amended the claim language of claim 4 from "an upper" to "the upper," as suggested by the Examiner. Further, Applicant has amended the claim language of claim 5 from "the footwear" to "the article of footwear," as suggested by the Examiner. Additionally, Applicant has amended the claim language of claim 6 from "a sole" to "the sole structure," as suggested by the Examiner. Accordingly, Applicant respectfully requests that the objections to the claims be withdrawn.
Examiner’s reply:
This argument is fully considered and are persuasive in part. Specifically: upon review of the amendment of 06/08/2026 and Applicant’s remarks of 06/08/2026, and upon further review of the disclosure as filed, the claim objections applied to claims 4-5 raised in the prior Office action are overcome. However, upon review of the amendment of 06/08/2026 and Applicant’s remarks of 06/08/2026, and upon further review of the disclosure as filed, claim 6 remains objected to; see Claim Objections below.
Applicant argues:
Claim Rejections - 35 U.S.C. & 103
Claim 1 recites a display system for an article of footwear. The display system includes a display device that includes an optoelectronic display, a control module that is configured to communicate with the display device, and a power source. The display device is connected to a cable fastening system. The cable fastening system is configured to provide an electrical signal to the display device. The cable fastening system is configured to tighten the article of footwear. Further, an upper is joined to a sole structure along a boundary. A portion of the boundary functions as an electrical contact.
Li, Radivojevic, and Chang, alone or in combination, fail to teach or suggest an upper that is joined to a sole structure along a boundary, such that a portion of the boundary functions as an electrical contact, as recited in claim 1. To support a primafacie case of obviousness under 35 U.S.C. § 103, an examiner must establish "a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference." M.P.E.P. § 2143(A) (citing KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398 (2007)). Accordingly, to overcome the rejection, Applicant need only identify a single limitation that is not arranged or combined in the prior art in the same way as recited in the claim.
The Office alleges that Li teaches an article of footwear (i.e., a shoe) that has a cable fastening system (i.e., shoelace 21). See Office action, p. 3. The Office correctly admits that Li does not teach a display system that includes a display device having an optoelectronic display, and relies on Radivojevic to modify Li with a display device (i.e., display 3) having an optoelectronic display. See id., p. 4. However, the Office correctly identifies that the combination of Li and Radivojevic still does not teach a portion of a boundary that functions as an electrical contact. See id., p. 5.
Instead, the Office relies on Chang to allegedly teach an upper (i.e., upper leather side wall 121) that is joined to a sole structure (i.e., upper leather bottom surface 124), and a portion of the boundary (i.e., the portion of a seam line (122)) that includes the guide wire (30) that functions as an electrical contact. See Office action, p. 6. However, this is incorrect since Chang does not teach that the guide wire (30) functions as an electrical contact at a boundary between an upper and a sole structure. Instead, Chang teaches that the guide wire (30) is inserted through a threaded opening (113), and is continuous from the threaded opening (113) to the seam line (122). See Chang, Para. [0013]. A guide part (32) of the guide wire (30) is positioned between a conductive insole (50) and the upper leather (12) to the seam line (122). See id., Para. [0018]. The guide part (32) is within the seam line (122), which joins portions of the upper leather (12) itself, namely the upper leather side wall (121) and the upper leather bottom surface (124), and not an upper and a sole structure. See Chang, Para. [0018]. Thus, the alleged boundary corresponds only to an internal seam of the upper leather (12), rather than to a boundary between an upper and a sole structure, as claimed. See Office action, p. 6. Accordingly, Chang also fails to teach or suggest an upper that is joined to a sole structure along a boundary, such that a portion of the boundary functions as an electrical contact, as recited in claim 1.
Examiner’s reply:
This argument is fully considered but is not persuasive. Element 124 of Chang is a sole structure as claimed, as stated in the Office action of 03/17/2026 (see p. 6 lines 4-5 thereof). Applicant’s argument that “guide part (32) is within the seam line (122), which joins portions of the upper leather (12) itself, namely the upper leather side wall (121) and the upper leather bottom surface (124), and not an upper and a sole structure” is fully considered but is not persuasive. Applicant’s argument that element 124 of [Chang, DE-202018103291-U1] is not a sole structure is fully considered but is not persuasive. Examiner acknowledges that the translation of Chang states “upper leather 12 comprises an upper leather side wall 121 and an upper leather bottom surface 124 sewn to each other”. However, although element 124 is described as being a component of “upper leather 12” in Chang, element 124 is nonetheless a “sole structure” as claimed.
As provided for in MPEP 2111.01, pending claims must be given their broadest reasonable interpretation (BRI) consistent with and in light of the specification and the BRI doesn't mean the broadest possible interpretation. The meaning given to a claim term must be consistent with the ordinary and customary meaning of the term and must be consistent with the use of the claim term in the specification and drawings.
In the present case—and referring to the disclosure as filed—the term “sole structure” is described as follows: “FIGS. 1-3 depict an exemplary embodiment of an article of footwear 100 including an upper 102 and a sole structure 104. The upper 102 is attached to the sole structure 104 and together define an interior cavity 106 (see FIGS. 2 and 3) into which a foot may be inserted” (para 23); “the sole structure 104 is connected or secured to the upper 102 and extends between a foot of a user and the ground when the article of footwear 100 is worn by the user. The sole structure 104 may include one or more components, which may include...an insole. For example, in some embodiments, a sole structure may include...an insole that provides support for an arch of a user. In addition, the insole may be a strobel board, a forefoot board, a lasting board, etc., or a combination thereof” (para 28).
Looking to the drawings, numerals 104, 208, 308, 408 are provided for a “sole structure”, and Figs. 1 and 4-6 show a sole structure attached to an upper in such a way that the upper is provided above the sole structure and Fig. 2 shows interior cavity 106 in relation to sole structure 104 and upper 102. Fig. 3 shows “the article of footwear...with an upper removed” (para 16) and shows a “user’s skeletal foot structure overlaid” on sole structure 104.
Looking to the ordinary and customary meaning of the term “sole structure”, the term “sole” means “1. the undersurface of a foot. 2. the corresponding under part of a shoe or other footwear” sole. (n.d.) Random House Kernerman Webster’s College Dictionary. (2010). Retrieved September 3 2026 from https://www.thefreedictionary.com/sole; and the term “upper” means “7. (Clothing & Fashion) the part of a shoe above the sole, covering the upper surface of the foot” upper. (n.d.) Collins English Dictionary – Complete and Unabridged, 12th Edition 2014. (1991, 1994, 1998, 2000, 2003, 2006, 2007, 2009, 2011, 2014). Retrieved September 3 2026 from https://www.thefreedictionary.com/upper.
Accordingly, attention is drawn to element 124 of Chang, which is a sole structure as claimed insofar as it is:
attached to upper 121 of Chang to define an interior cavity into which a foot may be inserted (as evidenced in Chang Fig. 7 wherein it is noted that the cavity defined by the combined 121 and 124 is capable of foot insertion thereinto), consistent with how the term “sole structure” is used in para 23 of the disclosure as filed; and connected or secured to the upper 121 and configured to extend between a foot of a user and the ground when the article of footwear is worn by the user, consistent with how the term “sole structure” is used in para 28 of the disclosure as filed; and provided under an upper and capable of receiving a foot structure overlaid thereupon as shown in the figures of the disclosure as filed
an under part of a shoe or other footwear that is corresponding to an undersurface of a foot, consistent with the ordinary and customary meaning of the term “sole”
Accordingly, element 124 of Chang is a “sole structure” as claimed and the upper 121 of Chang is joined to the sole structure 124 of Chang along a boundary, wherein a portion of the boundary functions as an electrical contact, as stated in Office action of 03/17/2026 (see second full paragraph of p. 6 thereof) and again repeated in the present Office action.
Applicant argues:
Further, Li teaches away from modifying its electrical system to incorporate the electrical design configurations taught in Chang because Li relies on a controlled, closed electrical circuit for power delivery. A reference teaches away from a proposed modification "when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." Ricoh Co., Ltd v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (quoting In re Kahn, 441 F.3d 977, 990 (Fed.Cir.2006)); see also In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Specifically, Li purports to teach a reliable electrical connection for external device charging by connecting a battery (12) within the shoe sole to a USB interface (22) in the shoe upper, thereby creating a direct and continuous conductive pathway between current outlet (121) and USB interface (22). See Li, Par. [0028]. By contrast, Chang is directed to an electrostatic discharge configuration for a shoe (10) and teaches conductive elements used for grounding, such as the conductive insole (50), by which "the electrical charge accumulated in the human body is dissipated into the earth through the guide wire." Chang, Para. [0011]. These teachings are fundamentally divergent since Chang's system is designed to connect a user's foot to the ground to eliminate charge, whereas Li's system teaches connecting an internal power source to an interface to transmit a charge for use. Thus, one following Li would be led in a direction divergent from its purpose if guided by Chang's electrostatic discharge configuration. Accordingly, one skilled in the art would not look to Chang to modify Li for the purpose of routing the wire of Li to a boundary between an upper and a sole structure, as asserted by the Office. See Office action, p. 6. For at least the foregoing reasons, Li, Radivojevic, and Chang, alone or in combination, fail to teach or suggest each and every element of claim 1 and, thus, Applicant respectfully traverses the rejection and requests allowance of claim 1 and all claims depending thereon.
Examiner’s reply:
This argument is fully considered but is not persuasive if only because the argument amounts to describing differences between Chang and Li without any persuasive showing that the art, in any material respect, teaches away from the claimed invention. Specifically: Applicant’s argument that “one following Li would be led in a direction divergent from its purpose if guided by Chang's electrostatic discharge configuration” is fully considered but is not persuasive because it does not show what the argued “direction divergent from its purpose” is that would lead a person of ordinary skill away from the claimed feature of “wherein a portion of the boundary functions as an electrical contact” as claimed. In other words, the argument does not show why or how a person reading both Chang and Li would be discouraged from arriving at the argued limitation of “wherein a portion of the boundary functions as an electrical contact”. Rather, the argument presents alleged differences between Chang and Li without stating how or why those alleged differences teach away other than the argument that there are differences between the two argued references. Examiner acknowledges Chang and Li are not identical to each other, nor are they alleged to be in the prior Office action or the present Office action. However, in Li, as stated in the Office action of 03/17/2026 and again repeated in the present Office action, electricity “can flow out from the current outlet 121 and then reaches the USB interface 22 through” an “lead” (para 28 of Li); Chang teaches an upper joined to a sole structure along a boundary, wherein a portion of the boundary functions as an electrical contact; and it would have been obvious to person having ordinary skill in the art to have modified the modified Li such that a portion of the boundary functions as an electrical contact to securely hold in place the electrical lead (see p. 6 of the Office action of 03/17/2026). That Li and Chang are argued to afford electrical contact for different reasons (the argued “direct and continuous conductive pathway between current outlet (121) and USB interface (22)” in reference to Li and the argued "the electrical charge accumulated in the human body is dissipated into the earth through the guide wire" in reference to Chang) is not a persuasive reason as to why a person of ordinary skill would be led away from the claimed feature of “wherein a portion of the boundary functions as an electrical contact” as claimed.
Claim Objections
Claim 6 is objected to because of the following informalities:
Claim 6 line 2: “a sole structure” should be --the sole structure--
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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, 4, and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Li, CN-203969349-U] in view of [Radivojevic, WO-2008151642-A1] and [Chang, DE-202018103291-U1].
Regarding claim 1:
Li discloses:
An article of footwear (“shoe”; para 21; no specific numeral provided therefor; elements thereof identified hereinbelow) comprising:
a power source 12,
a cable fastening system 21 configured to communicate with a mobile phone (para 26), wherein the cable fastening system 21 is configured to provide an electrical signal to the mobile phone (para 26),
wherein the cable fastening system 21 is configured to tighten the article of footwear (fastening system 21 is twined through each of 24 “like shoelace holes on common shoes” arranged “in two rows” on 2 (para 30) such that it is configured to tighten an article of footwear);
wherein an upper 2 is joined to a sole structure 1 along a boundary (Figs. 1-2).
Li does not expressly disclose
A display system for an article of footwear, the display system comprising: a display device that includes an optoelectronic display; a control module that is configured to communicate with the display device; and a power source, wherein the display device is connected to a cable fastening system, wherein the cable fastening system is configured to provide an electrical signal to the display device, wherein the cable fastening system is configured to tighten the article of footwear, wherein an upper is joined to a sole structure along a boundary, and wherein a portion of the boundary functions as an electrical contact.
However and in further view of Li:
Li is configured to receive a “mobile phone” within the “mobile phone bag 25” while “the shoelace 21 is...fixed on the vamp 2” and mobile phone connector 212 is connected with the mobile phone and plug 211 is connected with USB interface 22 for the purpose of providing electrical signal to the mobile phone (para 29).
Li does not expressly state the mobile phone comprises a display device that includes an optoelectronic display and a control module that is configured to communicate with the display device.
Radivojevic teaches and within the context of footwear (“shoe”; Abstract; “SHOE”; title) a mobile phone (“mobile telephone”; p. 9 line 25) that comprises a display device 3 that includes an optoelectronic display (“made of an LCD with...back lighting, such as a TFT”; p. 11 lines 9-10); and a control module 18 (i.e. “processor 18”; p. 11 line 16) that is configured to communicate with the display device (“processor 18...controls the operation of the” mobile phone and “forms the interface for...the graphical display 3”; p. 11 lines 15-16; p. 12 lines 6-8; Fig. 2).
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 article of footwear of Li such that it is provided with a mobile phone comprising a display device that includes an optoelectronic display and a control module that is configured to communicate with the display device within its mobile phone bag 25 and further wherein its cable fastening system is connected with the mobile phone in order to permit the user to charge the mobile phone whose display device and control module are configured such that a user of the mobile phone can see via the display device information displayed thereon and operate the mobile phone and its display device via the control module thereof. In adopting the modification, one would arrive at:
A display system (the system of the modified Li) for an article of footwear, the display system comprising: a display device (of the mobile phone) that includes an optoelectronic display; a control module (of the mobile phone) that is configured to communicate with the display device; and a power source (as in Li and as set forth hereinabove), wherein the display device is connected to a cable fastening system (via the cable fastening system being connected with the mobile phone and the USB interface), wherein the cable fastening system is configured to provide an electrical signal to the display device (via the charging of the mobile phone as described in Li para 29), wherein the cable fastening system is configured to tighten the article of footwear (as in Li and as set forth hereinabove), wherein an upper is joined to a sole structure along a boundary (as in Li and as set forth hereinabove).
The modified Li does not meet the limitation and wherein a portion of the boundary functions as an electrical contact.
In Li, the “current outlet 121 is electrically connected with the USB interface 22” whereby electricity “can flow out from the current outlet 121 and then reaches the USB interface 22 through” a “lead” (para 28).
However, Chang teaches a shoe (Title) wherein (Fig. 7) an upper 121 is joined to a sole structure 124 along a boundary (the boundary between “side wall 121” and “bottom surface 121”; para 18). Chang further teaches wherein a portion of the boundary (i.e. the portion of the boundary that includes wire 30 and its part 32 which are “attached to the seam...122” that sews together the upper and the sole structure; para 18; Fig. 7) functions as an electrical contact (wire 30 and its part 32 are “for electrical contact” (para 15)).
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 Li such that a portion of the boundary functions as an electrical contact, as in Chang, in order to yield the predictable result of a display system whose electrical lead (i.e. the lead connecting outlet 121 and interface 22) is held securely in place within the boundary as the electrical lead extends between connecting outlet 121 and interface 22.
Regarding claim 2:
Li in view of Radivojevic and Chang teach The display system of claim 1, as set forth above.
Li further discloses wherein the cable fastening system includes at least one cable having a conductive material (shoelace 21 is a cable and is configured to conduct electricity therethrough (para 26) such that cable fastening system 21 includes at least one cable having a conductive material).
Regarding claim 4:
Li in view of Radivojevic and Chang teach The display system of claim 1, as set forth above.
Li further discloses wherein the display device at least partially conceals an exterior layer of the upper.
(Display device is provided as a component of the mobile phone within mobile phone bag 25; accordingly, display device at least partially conceals a layer of the upper behind the mobile phone).
Regarding claim 6:
Li in view of Radivojevic and Chang teach The display system of claim 1, as set forth above.
Li further discloses wherein the cable fastening system extends between a wrap 24 (i.e. one of 24 wherein the “tape” 24 also referred to as “knot” 24 is configured to wrap around the cable fastening system 21 traversing therethrough such that it a tape/knot 24 is a wrap as claimed and a sole structure 1 (it is noted that wrap 24 is provided above cable fastening system and sole 1 is provided below the cable fastening system such that cable fastening system is extending between wrap 24 and sole 1) of the article of footwear along a lateral side of the article of footwear (para 30; Fig. 2).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Li, CN-203969349-U], [Radivojevic, WO-2008151642-A1], and [Chang, DE-202018103291-U1] as applied to claim 1 above, and further in view of [Eim, US 2016/0250099].
Regarding claim 3:
Li in view of Radivojevic and Chang teach The display system of claim 1, as set forth above.
The modified Li further meets the limitation wherein a characteristic (i.e. the transfer of charge for the purpose of charging) is configured to change by actuation of the cable fastening system to tighten the footwear (Li is configured that upon actuating and tightening the cable fastening system 21, the fastening system 21 and its mobile phone connector 212 are capable of being brought to and connected to the mobile phone for the purpose of charging).
Li does not expressly disclose wherein a visual characteristic of the display device is configured to change by actuation of the cable fastening system to tighten the footwear.
However, Eim teaches a mobile phone (para 61) within the context of shoes (Abstract) wherein a visual characteristic of a display device is configured to change upon actuation into a charged state: “when the user puts the...device 200 on” a “charger 400, the...device starts to be charged and an indicator for indicating a state of charge may be displayed” (para 204).
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 Li such that a visual characteristic of the display device is configured to change by actuation of the cable fastening system to tighten the footwear in order to indicate to a user that the mobile phone is charging when it is charging, as suggested by Eim (para 204).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Li, CN-203969349-U], [Radivojevic, WO-2008151642-A1], and [Chang, DE-202018103291-U1] as applied to claim 1 above, and further in view of [Oumnia, US 2020/0289028].
Regarding claim 5:
Li in view of Radivojevic and Chang teach The display system of claim 1, as set forth above.
Li further discloses wherein the power source is electrically connected to a charging port 22 at a heel end of the footwear (Fig. 1, wherein the term “at” means “In or near the area occupied by; in or near the location of”; at. (n.d.) American Heritage® Dictionary of the English Language, Fifth Edition. (2011). Retrieved March 4 2026 from https://www.thefreedictionary.com/at).
Li does not expressly disclose the charging port 22 is selectively covered by a tab located at the heel end of the article of footwear.
However, Oumnia teaches a shoe port selectively covered by a tab: “the removable tab or USB cover allows to protect the USB port from foreign objects. For example, the removable tab can be used to protect the USB port from water or dust”; para 115.
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 Li such that its charging port is selectively covered by a tab located at the heel end of the article of footwear in order to permit one to protect the port from foreign objects, water, and/or dust, as taught by Oumnia (para 115).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Li, CN-203969349-U], [Radivojevic, WO-2008151642-A1], and [Chang, DE-202018103291-U1] as applied to claim 1 above, and further in view of [Calabrese, US 5,955,957].
Regarding claim 7:
Li in view of Radivojevic and Chang teach The display system of claim 1, as set forth above.
Li does not expressly disclose wherein the cable fastening system includes a second display device comprising a second optoelectronic display.
However, Calabrese teaches a cable fastening system 9101 (“lace...[] 910)”; para 102) including a display device comprising an optoelectronic display (“Tubular EL panel light device”; para 102). Calabrese further teaches the optoelectronic display is appropriate for “consumer application such as... lighting,...Decoration device for Safety, Decorating...Warning light, Accent light, illumination light” (para 24).
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 Li such that its cable fastening system is includes a second display device comprising a second optoelectronic display in order to provide illumination, safety, and/or decoration to the display system as taught by Calabrese (para 24).
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 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.
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/GRADY ALEXANDER NUNNERY/Examiner, Art Unit 3732
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