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 .
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 4, 5, 7, 9, 16, 18 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application Publication No. US 2017/0181496 (hereinafter “Guyan”). Regarding claim 1 Guyan teaches a lattice structure (structure) comprising a first lattice structure (first lattice) which is part of a cushioning member (provides a property of the structure), and a second lattice structure (second lattice) which is disengaged from the first lattice structure in a first configuration, and engages with the first lattice structure in a second configuration when moved into contact with the second lattice structure (second lattice is removably joinable to the first lattice), where the performance characteristics are provided by the lattice structure and may be adjusted by changing the structure of elements of the lattice structure (second lattice adjusts the property of the structure in a first manner and that is non-destructively removable from the first lattice to adjust the property of the structure in a second manner) (abstract; claim 1; and paragraphs [0007], [0065] – [0074], [0081] and [0082]). Regarding claim 2 In addition, Guyan teaches the first lattice structure (first lattice) and the second lattice structure (second lattice) are made into an interwoven and interlocking structure, where said first lattice structure and second lattice structure freely move relative to each other in a disengaged configuration, but also restrict movement by coming into contact and engaging with each other (paragraph [0068]), which corresponds to the second lattice adjusts the property of the structure after manufacturing.Regarding claim 4 In addition, Guyan teaches the first lattice structure and the second lattice structure are made into an interwoven and interlocking structure, where said first lattice structure and second lattice structure freely move relative to each other in a disengaged configuration, but also restrict movement by coming into contact and engaging with each other (paragraph [0068]), which corresponds to the second lattice is removably joinable to the first lattice with an interfering structure, which is defined by the applicant as a fastener. See paragraph [0037] from the specification as originally filed.Regarding claim 5 In addition, Guyan teaches the first lattice structure includes a first network of struts and nodes with voids defined between the struts and nodes (node having an opening). The second lattice structure (second lattice) includes a second network of struts (columns) and nodes with voids defined between the struts and nodes. The first network of struts and nodes is interwoven with the second network of struts and nodes such that the first network of struts and nodes extends through the voids in the second network of struts and nodes (abstract and Figure 7B). Guyan also teaches the first lattice structure and second lattice structure freely move relative to each other in a disengaged configuration, but also restrict movement by coming into contact and engaging with each other (paragraph [0068]). These teachings correspond to the opening of the first lattice receives the column of the second lattice to removably join the second lattice to the first lattice.Regarding claim 7 In addition, Guyan teaches the lattice structure is manufactured by a 3D printing process, where the first lattice structure is 3D printed along with (concurrently) the second lattice structure (paragraph [0079] and Figure 12). Alternatively, or in addition, the use of product-by-process limitations has been noted in claim 7, for example, "the first lattice and the second lattice are manufactured concurrently via three-dimensional (3D) printing". "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process", In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, "although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product", In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP §2113.Regarding claim 9 In addition, Guyan teaches the interwoven lattice structure (structure) is formed to provide a cushioning member and generate predetermined support and flexure properties (having a predetermined level of stiffness) within the network of struts and nodes (paragraph [0007]), which corresponds to the property provided by the lattice structure includes stiffness.Regarding claim 16 Guyan teaches a lattice structure (structure) comprising a first lattice structure (first lattice) which is part of a cushioning member and generates predetermined support and flexure properties (provides a stiffness of the structure) within a network of struts and nodes, and a second lattice structure (second lattice), where the first lattice structure includes a first network of struts and nodes, and the second lattice structure (second lattice) includes a second network of struts and nodes, where the first network of struts and nodes is interwoven (intermeshed) with the second network of struts and nodes (abstract and paragraph [0007]). Guyan teaches the second lattice structure (second lattice) may be disengaged from the first lattice structure in a first configuration, and may engage with the first lattice structure in a second configuration when moved into contact with the second lattice structure, where the performance characteristics are provided by the lattice structure and may be adjusted by changing the structure of elements of the lattice structure (second lattice retained in a user-selected position relative to the first lattice, the second lattice being manually and intentionally repositionable by a user relative to the first lattice to adjust the stiffness of the structure) (abstract; claim 1; and paragraphs [0007], [0065] – [0074], [0081] and [0082]). Regarding claim 18 In addition, Guyan teaches the first lattice structure (first lattice) and the second lattice structure (second lattice) are made into an interwoven and interlocking structure, where said first lattice structure and second lattice structure freely move relative to each other in a disengaged configuration, but also restrict movement by coming into contact and engaging with each other, where the interwoven lattice structure (structure) is formed to provide a cushioning member and generate predetermined support and flexure properties (having a predetermined level of stiffness) within the network of struts and nodes (paragraphs [0007] and [0068]), which corresponds to the second lattice adjusts the stiffness of the structure after manufacturing.Regarding claim 19 In addition, Guyan teaches the lattice structure is manufactured by a 3D printing process, where the first lattice structure is 3D printed along with (concurrently) the second lattice structure (paragraph [0079] and Figure 12). Alternatively, or in addition, the use of product-by-process limitations has been noted in claim 19, for example, "the first lattice and the second lattice are manufactured concurrently via three-dimensional (3D) printing". "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process", In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, "although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product", In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP §2113.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Guyan as applied to claim 16 above, and further in view of United States Patent Application Publication No. US 2016/0374428 (hereinafter “Kormann”).Regarding claim 17 The limitations for claim 16 have been set forth above. In addition, Guyan teaches the lattice structure may be incorporated into an article of footwear, including a sole assembly (paragraph [0007]). Guyan does not explicitly teach a knob coupled to the second lattice structure (second lattice) and that is user operable to manually and intentionally position the second lattice relative to the first lattice to adjust the stiffness of the structure. Kormann teaches a sole for shoes comprising a lattice structure having a plurality of cell elements (abstract). Kormann teaches the lattice structure may comprise at least one moveable element integrally manufactured with the lattice structure (coupled to the lattice structure), where the moveable element may be manipulated to alter a property of the sole, like stability for example (user operable to manually and intentionally position the lattice structure (position the second lattice structure relative to the first lattice structure of Guyan)) (paragraph [0044]). Kormann also teaches the movable element may be moved from a fixed first position into a fixed second position (Id). Kormann teaches providing materials having a higher density and/or stiffness (adjusting the stiffness of the structure) contributes to improved stability (paragraph [0017]). Kormann teaches the moveable elements may be controlled by a lever or moveable control element, such as a push-button (knob), etc. (paragraphs [0129] and [0130]). Guyan and Kormann are analogous inventions in the field of lattice structure supports for footwear soles. It would have been obvious to one skilled in the art at the time of the invention to modify the second lattice structure (second lattice) of Guyan with the moveable element and control element of Kormann to provide a mechanism for adjusting properties, like breathability or stability (stiffness) of an article of footwear based on user preference and input (manipulating the aforementioned moveable control element).
Response to Arguments
Applicant's arguments filed 17 August 2026 have been fully considered but they are not persuasive.
The applicant argued Guyan teaches the first lattice cannot be completely released from the second lattice, which fails to meet the limitation requiring the second lattice is removably joinable to the first lattice, not one that is non-destructively removable from the first lattice. The examiner respectfully disagrees. Guyan does teach the first lattice and the second lattice has two different configurations. The first configuration requires the first lattice and second lattice to be disengaged from each other, and a second configuration requires the first lattice and second lattice to be engaged with each other, where the structure may alternate freely between the first configuration to the second configuration. This feature meets the claimed limitation requiring: the second lattice to be removably joinable to the first lattice structure; the second lattice is non-destructively removable from the first lattice; etc.
Regarding claim 16, the applicant argued Guyan does not teach the second lattice is not retained in a user-selected position relative to the first lattice, nor can the second lattice be manually and intentionally repositioned by a user. The examiner respectfully disagrees and contends the engagement and disengagement of the first lattice and the second lattice from Guyan is in regard to the use of the article made therefrom. That is, the force applied onto the shoe sole is by a user, and the user selects the activity, such as running, walking, etc., which causes the aforementioned engagement and disengagement of the first lattice and the second lattice. Therefore, the structure of lattice disclosed by Guyan is capable of performing the claimed functions, including: (i) the second lattice is retained in a user-selected position relative to the first lattice; and (ii) the second lattice is manually and intentionally repositionable by a user.
The applicant argued Kormann teaches a mechanism that requires a cover element that slides over vent holes cut into a solid outsole-like layer, to open or close airflow paths, and there are only two elements at play, a mover and a hole in a solid sheet, and not two interacting three-dimensional lattice networks whose relative position to one another changes the mechanical behavior of the whole structure. The examiner respectfully submits this argument is not commensurate in scope with the rejection of record. The argument presented by the applicant is directed to an embodiment not relied upon by the examiner to meet the claims. Specifically, Kormann teaches a moveable element (in paragraph [0044]) which is integrally manufactured with the lattice structure, where the moveable element may be manipulated to alter a property of the sole, like breathability or stability for example. The embodiment highlighted by the applicant appears to exclusively address breathability, which is not relied upon by the examiner to meet the claims.
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 BRIAN HANDVILLE whose telephone number is (571)272-5074. The examiner can normally be reached Monday through Thursday, from 9 am to 4 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Veronica Ewald can be reached at (571) 272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN HANDVILLE/Primary Examiner, Art Unit 1783
