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 .
DETAILED ACTION
Response to Amendment
Applicant’s amendment filed November 10, 2025 has been received, Claims 1-5, 11 and 13-23 are currently pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
1. Claims 4 and 11 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 4 “wherein said material is slack enough such that it is configured to allow maximum toe articulation”. The claim limitation is indefinite as it is unclear what the metes and bounds of the term “enough” are in terms of structure, rendering the phrase “slack enough” an entirely unknown measurement. Claim 4 is rejected as best understood by examiner.
Claim 11 “wherein said connecting portion comprises a taut material which is taut enough such that it is configured to allow minimal toe articulation”. The claim limitation is indefinite as it is unclear what the metes and bounds of the term “enough” are in terms of structure, rendering the phrase “taut enough” an entirely unknown measurement. Claim 11 is rejected as best understood by examiner.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
2. Claim(s) 1-5, 11, 13-19, and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Anfruns (US 3,967,390) in view of Hernandez (US 2008/0263893).
Regarding Claim 1, Anfruns discloses a piece of footwear for use in physical activities comprising: a sole (8); an upper (5) attached to the sole; a plurality of pockets (i.e. each of the five toe compartments 7) each pocket for receiving a toe (as seen in Fig.1); wherein said pockets comprise side walls (3B) and said side walls comprise a top and a bottom (as seen in Fig.1 & 5-6; 3B have a top surface and a bottom surface); wherein there is provided a connecting portion (3C) located between two or more of the pockets and wherein said connecting portion is located at the top of said side walls (as seen in Fig.1 & 3; Col.2, lines 40-45). Anfruns does not disclose the sole comprising one or more protrusions for engaging with the ground. However, Hernandez teaches a sole (38) having one or more protrusions (81) for engaging with the ground (as seen in Fig.3; para.42 & 47).
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 modified the sole of Anfruns to have protrusions, as taught by Hernandez, in order to provide a sole that delivers the desired level of traction to a user while engaged in a sport activity.
Regarding Claim 2, Anfruns discloses a piece of footwear as claimed in claim 1, wherein said connecting portion (3C) is located between each of the pockets (i.e. each of the five toe compartments 7)(as seen in Fig.1 & 3).
Regarding Claim 3, Anfruns discloses a piece of footwear as claimed in claim1, wherein said sole (8) comprises a plurality of extensions (2) corresponding to the plurality of pockets (as seen in Fig.1 & 4).
Regarding Claim 4, Anfruns discloses a piece of footwear as claimed in claim 3, wherein said connecting portion (3C) comprises a non-elastic material (Col.3, lines 2-3) and wherein said material is slack enough such that it is configured to allow maximum toe articulation (inasmuch as has been claimed by Applicant, 3C is slack “enough” to allow maximum toe articulation).
Regarding Claim 5, When in combination, Anfruns and Hernandez teach a piece of footwear as claimed in claim 3, wherein each of the extensions (Anfruns: 2) comprises at least one protrusion (Hernandez: 81 on extensions 55 & 56; as seen in Fig.3).
Regarding Claim 11, Anfruns discloses a piece of footwear as claimed in claim 1, wherein said connecting portion (3C) comprises a taut material (Col.3, lines 2-3) which is taut enough such that it is configured to allow minimal toe articulation (inasmuch as has been claimed by Applicant, 3C is taut “enough” to allow minimal toe articulation).
Regarding Claim 13, Anfruns discloses a piece of footwear as claimed in claim 1, wherein said side walls are cushioned (Col.3, lines 2-3; inasmuch as has been claimed by Applicant, the sheepskin of 3B is “cushioned” in that it is soft and a barrier layer between the environment and a user).
Regarding Claim 14, 16, and 17, Anfruns and Hernandez disclose the invention substantially as claimed above. Anfruns and Hernandez do not disclose wherein one or more of the protrusions are conical, bladed, or shaped in the form of a chevron. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the protrusions of modified Anfruns to be conical, bladed, or shaped in the form of a chevron, in order to provide the optimum level of traction for a user. Further, Anfruns and Hernandez disclose the claimed invention except for the protrusions being conical, bladed, or shaped in the form of a chevron. It would have been an obvious matter of design choice to one skilled in the art before the effective filing date of the claimed invention to construct the protrusions to be conical, bladed, or shaped in the form of a chevron, since applicant has not disclosed that this solves any stated problem or is anything more than one of numerous shapes or configurations a person of ordinary skill in the art would find obvious for the purpose of providing the desired level of traction. In re Dailey and Eilers, 149 USPQ 47 (1966).
Regarding Claim 15, Hernandez further teaches a piece of footwear as claimed in claim 1, wherein one or more of the protrusions are spiked (para.42 & 47).
Regarding Claim 18, Anfruns discloses a piece of footwear as claimed in claim 1, wherein the upper (5) comprises a cushioning portion (i.e. leather is cushioning, inasmuch as has been claimed by Applicant, as leather is a barrier layer between the environment and a user).
Regarding Claim 19, Anfruns discloses a piece of footwear as claimed in claim 1, wherein the upper (5) comprises an external grip (i.e. the ankle opening of 5 is an external grip, inasmuch as has been claimed by Applicant, in that a user can grip the opening to pull on the shoe).
Regarding Claim 23, Anfruns discloses a piece of footwear as claimed in claim 1, wherein there is provided a material (Col.3, lines 3-5) for reinforcing the upper of the toe pocket (i.e. leather would reinforce the upper of the toe pocket, inasmuch as has been claimed by Applicant, as leather is known to be durable).
3. Claim(s) 20-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Anfruns (US 3,967,390) and Hernandez (US 2008/0263893) in view of Fliri (US 2007/0144039).
Regarding Claim 20, Anfruns and Hernandez disclose the invention substantially as claimed above; including Anfruns disclosing an outsole (8 is an outsole)(as seen in Fig.4). Anfruns does not disclose wherein the sole comprises an insole. However, Fliri teaches a footwear with toe pockets having an outsole (12) and an insole (16)(para.31; as seen in Fig.1).
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 modified the footwear of Anfruns to include an insole, as taught by Fliri, in order to provide a comfortable and supportive substrate for a user’s foot to rest upon.
Regarding Claim 21, Anfruns and Hernandez disclose the invention substantially as claimed above; including Anfruns disclosing an outsole (8 is an outsole)(as seen in Fig.4). Anfruns does not disclose wherein the outsole extends up a portion of the toe section of the foot. However, Fliri teaches a footwear having an outsole (12) that extends (via 34) up a portion of a toe section (26) of the foot (para.35).
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 modified the outsole of Anfruns to extend up a portion of the toe section, as taught by Fliri, in order to provide a more durable toe portion that can withstand abrading wear-and-tear during use.
Regarding Claim 22, Anfruns and Hernandez disclose the invention substantially as claimed above. Anfruns does not disclose wherein there is provided an additional insole for cushioning of the foot. However, Fliri teaches a footwear with toe pockets having an insole (16) for cushioning of the foot (para.31; as seen in Fig.1).
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 modified the footwear of Anfruns to include an insole, as taught by Fliri, in order to provide a comfortable and supportive substrate for a user’s foot to rest upon.
Response to Arguments
Applicant's arguments filed November 10, 2025 have been fully considered but they are not persuasive.
4. Applicant’s Remarks: Applicant respectfully asserts that the Terms "Slack Enough" and "Taut Enough" are structurally and functionally defined. In Claim 4, "slack enough" describes a configuration that allows articulation up to the full natural range of motion, but not beyond; In Claim 11, "taut enough" describes a configuration where the webbing becomes tensioned before the end of that range, thereby preventing excessive articulation that could lead to instability or injury.
Examiner’s Response: Examiner respectfully disagrees. The claim limitation is indefinite as it is unclear what the metes and bounds of the term “enough” are in terms of structure, rendering the phrase “slack/taut enough” an entirely unknown measurement. Applicant’s arguments are not found persuasive as the range of motion of the toes does not provide an understanding of how a material is “slack/taut enough”. For these reasons, the 35 U.S.C. 112b rejection is maintained.
5. Applicant’s Remarks: Applicant asserts Anfruns does not disclose or suggest the claimed webbing. Anfruns discloses a multi-toe footwear structure comprising five separate toe pockets. However: The cited structure 3C is merely the stitched seam or junction at the top edges of adjacent toe pockets. It is a conventional constructional feature, not a purposeful bridging element. There is no structure that spans between the toe compartments across the inter-toe gaps. Element 3C of Afruns is a top seam, not a bridging structure across an inter-toe space. It does not bridge the open space between toe pockets, nor does it connect walls across the gap - a fundamental feature of the claimed webbing. Accordingly, the claimed invention is structurally distinct, functionally distinct, and solves a unique real-world problem in athletic performance footwear that is neither addressed nor suggested in the prior art.
Examiner’s Response: Examiner respectfully disagrees and notes that 3C of Afruns is not a top seam, as asserted by Applicant, 3C are interconnecting walls (as seen in Fig.1 & 3; Col.2, lines 40-45). Inasmuch as has been claimed by Applicant, Afruns discloses all of the claim limitations being disputed by Applicant. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “webbing”, “structure that spans between the toe compartments across the inter-toe gaps”, and “a bridging structure across an inter-toe space”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Currently the claims merely recite “a connecting portion located between two or more of the pockets and wherein said connecting portion is located at the top of said side walls”. If Applicant desired a different interpretation of the claim limitations, then Applicant must explicitly recite such structure in the claims. In response to applicant's argument that the claimed invention is structurally distinct, functionally distinct, and solves a unique real-world problem in athletic performance footwear that is neither addressed nor suggested in the prior art, 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). For these reasons, Applicant’s arguments are not found persuasive.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGAN E LYNCH whose telephone number is (571)272-3267. The examiner can normally be reached Monday to Friday, 8:00am-4:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached at 571-272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732