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 October 7, 2025 has been received, Claims 1, 3-14, and 16-20 are currently pending.
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.
1. Claim(s) 1, 3-14, 16 and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schoenborn (US 2006/0277792).
Regarding Claim 1, Schoenborn discloses a sole assembly comprising: an upper midsole layer (18) defining a first cavity (medial one of 78; para.45) in an aft region (i.e. heel region), the first cavity extending substantially transversely relative to a longitudinal axis (as seen in Fig.1, 3 & 5; 78 extend transversely to the length/longitudinal axis of 18); a lower midsole layer (14,16) connected to the upper midsole layer (as seen in Fig.2), the lower midsole layer transversely covering the cavity (as seen in Fig.5 & 10-11); and an outsole layer (12) connected to the lower midsole layer (as seen in Fig.2); wherein the upper midsole layer defines a second cavity (lateral one of 78 directly across from medial one of 78) in the aft region extending substantially transversely relative to the longitudinal axis (as seen in Fig.1, 3 & 5; 78 extend transversely to the length/longitudinal axis of 18); and wherein the first cavity and the second cavity at least partially define a passageway (82; para.45, as seen in Fig.5 medial & lateral 78 “define” 82, inasmuch as has been claimed, as they shape the ends of 82), and further wherein the passageway is at least partially defined by a rear arch (i.e. arch of medial & lateral 78) of the sole assembly (as seen in Fig.5).
Regarding Claim 3, Schoenborn discloses a sole assembly of claim 1, wherein the first cavity (medial one of 78) is aligned with the second cavity (lateral one of 78 directly across from medial one of 78)(as seen in Fig.5).
Regarding Claim 4, Schoenborn discloses a sole assembly of claim 1, wherein the first cavity (medial one of 78) is in communication (via 82; para.45) with the second cavity (lateral one of 78 directly across from medial one of 78)(as seen in Fig.3 & 5).
Regarding Claim 5, Schoenborn discloses a sole assembly of claim 1, wherein the outsole layer is grooved (see annotated Figure below).
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Regarding Claim 6, Schoenborn discloses a sole assembly of claim 1, wherein the lower midsole layer and the outsole layer form one or more pods (as seen in Fig.11 & 12 and annotated Figure below; the portions between grooves in 12 and 56a c of 14,16 are pods, inasmuch as has been claimed by Applicant).
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Regarding Claim 7, Schoenborn discloses a sole assembly of claim 1, wherein the upper midsole layer (18) defines at least one of a medial longitudinal concavity and a lateral longitudinal concavity (see annotated Figure below).
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Regarding Claim 8, Schoenborn discloses a sole assembly of claim 1, wherein the lower midsole layer (14) is exposed through at least one of a window and a cut-out (i.e. void between 20 & 22) defined in the outsole layer (12)(as seen in Fig.1 & 12).
Regarding Claim 9, Schoenborn discloses a sole assembly of claim 8, wherein the cut-out is a first cut-out (i.e. void between 20 & 22), the upper midsole layer (18) is exposed through the first cut-out (i.e. void between 20 & 22), and the upper midsole layer is exposed through a second cut-out (80) defined in the lower midsole layer (14)(as seen in Fig.11-12; para.34).
Regarding Claim 10, Schoenborn discloses a sole assembly of claim 1, wherein a side (i.e. top side) of the upper midsole layer defines a plurality of grooves (72)(para.43; as seen in Fig.4).
Regarding Claim 11, Schoenborn discloses a sole assembly of claim 1, wherein the outsole layer (12) is connected to the upper midsole layer (18) at a toe end and forms a toe wrap (i.e. projection at toe end of 12 that wraps upward on the toe end of 18)(as seen in Fig.2 & 11).
Regarding Claim 12, Schoenborn discloses a sole assembly of claim 1, wherein the lower midsole layer (14,16) includes a forward portion (44,42) and a rear portion (14,40)(para.35; as seen in Fig.1).
Regarding Claim 13, Schoenborn discloses a sole assembly of claim 1, wherein the outsole layer (12) includes a forward portion (20) and a rear portion (22)(as seen in Fig.1 & 12).
Regarding Claim 14, Schoenborn discloses a sole assembly of claim 1, wherein the upper midsole layer (18) is exposed along a midfoot region (as seen in Fig.2, 18 is visible at the midfoot region).
Regarding Claim 16, Schoenborn discloses a sole assembly comprising: an outsole layer (12); a lower midsole layer (14,16) connected to the outsole layer; an upper midsole layer (18) connected to the lower midsole layer (as seen in Fig.2), the upper midsole layer defining a well (64), a first cavity (medial one of 78), a second cavity (lateral one of 78 directly across from medial one of 78), and a transverse passageway (82; para.45), the lower midsole layer transversely covering the first cavity and the second cavity (as seen in Fig.5 & 10-11), the transverse passageway being in communication with the first cavity and the second cavity (as seen in Fig.3 & 5), and further wherein the passageway is at least partially defined by a rear arch of sole assembly (i.e. arch of medial & lateral 78)(as seen in Fig.5); and a drop-in layer (62) nested in the well (as seen in Fig.1 & 4; para.42).
Regarding Claim 19, Schoenborn discloses a sole assembly comprising: an upper midsole layer (18) having a post (50b) located along a medial centerline (i.e. a transverse line extending from 50b/42 to 50a), defining a valley (42) connected to the post (as seen in Fig.1 & 2), and defining a transverse cavity (78) in an aft region; a lower midsole layer (14,16) connected to the upper midsole layer (as seen in Fig.2), the lower midsole layer transversely covering the transverse cavity (as seen in Fig.5 & 10-11); an outsole layer (12) connected to the lower midsole layer (as seen in Fig.2); wherein the transverse cavity is a first cavity (medial one of 78; para.45) wherein the upper midsole layer defines a second cavity a second cavity (lateral one of 78 directly across from medial one of 78) in the aft region and wherein the first cavity and the second cavity at least partially define a passageway (82; para.45, as seen in Fig.5 medial & lateral 78 “define” 82, inasmuch as has been claimed, as they shape the ends of 82), and further wherein the passageway is at least partially defined by a rear arch (i.e. arch of medial & lateral 78) of the sole assembly (as seen in Fig.5).
Regarding Claim 20, Schoenborn discloses a sole assembly of claim 19, wherein the valley (42) is defined along the medial centerline (i.e. a transverse line extending from 50b/42 to 50a)(as seen in Fig.11).
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) 17 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schoenborn (US 2006/0277792) in view of Nishiwaki (US 2001/0052194).
Regarding Claim 17, Schoenborn discloses the invention substantially as claimed above. Schoenborn does not disclose wherein the drop-in layer extends beyond a footbed of the upper midsole layer. However, Nishiwaki teaches an upper midsole layer (2) defining a well (8) and a drop-in layer (7,3) nested in the well (as seen in Fig.5 & 7); and wherein the drop-in layer extends beyond a footbed (i.e. top surface of 2) of the upper midsole layer (as seen in Fig.7; 7 extends over/beyond the top surface of 2).
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 drop-in layer of Schoenborn to extend beyond a footbed of the upper midsole layer, as taught by Nishiwaki, in order to provide a drop-in layer which facilitates the shearing transformation and contributes to improved cushioning.
Regarding Claim 18, Schoenborn discloses the invention substantially as claimed above. Schoenborn does not disclose wherein the drop-in layer defines a plurality of cuts along a forward region. However, Nishiwaki teaches an upper midsole layer (2) defining a well (8) and a drop-in layer (7,3) nested in the well (as seen in Fig.5 & 7); and wherein the drop-in layer defines a plurality of cuts (32a) along a forward region (i.e. forward, front half of 7,3)(as seen in Fig.6).
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 drop-in layer of Schoenborn to have a plurality of cuts, as taught by Nishiwaki, in order to provide a drop-in layer which facilitates the shearing transformation and contributes to improved cushioning.
Response to Arguments
In view of Applicant's amendment, the search has been updated, and newly modified grounds of rejection have been identified and applied. Applicant's arguments have been considered but, as they are drawn solely to the newly amended limitations, are moot in view of the newly modified ground(s) of rejection.
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 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
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