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 .
Election/Restrictions
Applicant's election with traverse of Species II (article of footwear wherein the midsole includes the shape memory allow element (SMA) as shown in figure 8 but the SMA plate (40) is replaced with interwoven fiber members (16) and SMA elongated elements (12) as shown in figure 3) in the reply filed on 10/23/2025 is acknowledged. The traversal is on the ground(s) that “any of the different SMA elements shown in the figures could be characterized as being ‘encapsulated [or disposed] in a polymer’ when they ‘replace the SMA plate (40), as stated by the Examiner. See, for example, paragraph [0048] which states ‘As shown in FIG. 4, the SMA structure(s) or elements 12 and possibly the interwoven fiber reinforcement members [shown in FIG. 3] may then be encapsulated in a main body portion 20 that comprises a material and is shaped to the design of the footwear component.’ Emphasis added. As shown in FIG. 4, the SMA elements are encapsulated or disposed in a main body portion 20 (which may be made of a polymer or the like). This is not found persuasive because ¶0048 does not actually say “[shown in figure 3]”. Additionally, ¶0048 is referring to the embodiment shown in figure 4 and states “and possibly the interwoven fiber reinforcement members may then be encapsulated in a main body”. As understood, the only fiber reinforcement members previously recited are members “16” in figure 3 and it would appear Applicant is teaching the embodiment as shown in figure 4 could also possibly have these fiber reinforcement members. Although, a full and clear description of figure 4 with these fiber reinforcement members has not been provided. It is concluded that ¶0048 is NOT teaching the Shape memory alloy elements (SMA) as shown in figure 3 are encapsulated within a polymer, as required by claims 2-3 and therefore claims 2-3 will be withdrawn from consideration. Applicant also argues claim 8 has support “in at least ¶0017,0050-0055 and Figs 3-8. It should be understood that neither plate nor ‘semi-rigid plate’ is not limited to the embodiment of FIG. 8. For example, the entire discussion from paragraph [0050] to [0055] discusses the exemplary creation of plates with SMA elements and semi-rigid plates. See, e.g., paragraph [0055], which states ‘In some embodiments, the SMA structure (and possible interwoven fiber reinforcement) may then be encapsulated in a secondary material and shaped to the design of the footwear component. Secondary materials may be a semi-rigid resin (or other material) that is inserted, poured, injected or the like.’” This is not found persuasive, because there is no specific support for the interwoven fiber reinforcement assembly (15) as shown in figure 3 for the shape memory alloy elements (12,12) to be a semi-rigid plate and/or for the assembly (15) to be “encapsulated in a secondary material” as defined in ¶0055. In fact, ¶0055 doesn’t even mention a semi-rigid plate. Based upon the evidence argued by applicant it would be a substantially leap to conclude the shape memory allow (12,12 as shown in figure 3) is associated with a semi-rigid plate as argued by applicant. Therefore, claims 8-13 have also been withdrawn from examination.
The requirement is still deemed proper and is therefore made FINAL.
Claims 2,3,5,6 and 8-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made with traverse in the reply filed on 10/23/2025.
To the extent that the withdrawn claims get rejoined, applicant should amend them during prosecution. Accordingly, if the independent claim is no longer generic then applicant is encourage to cancel the withdrawn claims.
Claim Rejections - 35 USC § 112
Claims 1,4,7 and 15-18 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.
It is not clear if claim 4, reads on the elected embodiment. The only structure that possibly could read on the elected embodiment is the “3D woven, interwoven springs” (i.e. the interwoven fiber reinforcement assembly 15 (12,14,16) inasmuch as this could possibly function as a spring when compressed. If applicant confirms this then this rejection can be withdrawn. The specification doesn’t clearly state that this structure functions as a spring and/or is a spring and therefore is unclear and indefinite.
In claim 1, the phrase “midsole and outer sole” is unclear and indefinite since the midsole and the outer sole have not been properly introduced in the claims. The phrase should be changed to “a midsole and an outersole” to be definite.
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 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.
Claim(s) 1,4,7 and 15-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2021/0186148 (Christensen).
Regarding claims 1,4,7 and 15-17, Christensen, teaches an article of footwear (e.g. 10) that includes an upper (20), midsole (e.g. 30,130,230) and outer sole (e.g. 38; see figure 4 and ¶0053), wherein the midsole includes a shape memory alloy element (e.g. 34,134,234,334,340,350,360,370) associated therewith.
Regarding claim 4, at least see figures 8,9 and 12-16 showing a 3D woven, interwoven springs.
Regarding claim 7, at least see figures 8-9 and see ¶0048 and 0073, lines 5-7.
Regarding claim 15, at least see figures 8,9 and 12-16, and ¶0048,0059 and 0073, lines 5-7. Also, see ¶0039,0041 and 0050 which teaches the shape memory components may be a thread. By definition a thread is a fiber.
Regarding claim 16, at least see frame member 32.
Regarding claim 17, at least see figure 10, showing shape memory allow (334) contained within the midsole and see figures 12-19 and at least ¶0070,0071 and 0076. ¶0076 teaches the SMA structure can also be partially embedded within the sole.
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) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Christensen ‘148 in view of US 2012/0023686 (Huffa).
Christensen teaches an article of footwear as claimed (see the rejection above for details) except for the fiber (thread) being comprised of Kevlar, nylon or polyester. Although, Christensen teaches the shape memory alloys may also include plastic polymers; at least see ¶0037-0039 and 0051.
Huffa teaches an article of footwear wherein the threads/fibers (42; see figure 2 and ¶0032) which teaches them made out of nylon or polyester. It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the plastic polymer of the shape memory alloy thread/fibers as taught by Christensen to be constructed out of nylon or polyesters or other combinations, as taught by Huffa, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. The claimed material merely amounts to a matter of engineering design choice and thus does not serve to patentable distinguish the claimed invention over the prior art. This view is buttressed by applicant's disclosure which does not reveal that the use of the specific material solves any particular problem and/or yields any unexpected results.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-2 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art cited and not relied upon by the Examiner for the above rejections are considered to be pertinent in that the references cited are considered to be the nearest prior art to the subject matter defined in the claims as required by MPEP707.05.
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.
Applicant is duly reminded that a complete response must satisfy the requirements of 37 C.F. R. 1.111, including:
-“The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.”
--“A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.”
-Moreover, “The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP 2163.06” MPEP 714.02. The “disclosure” includes the claims, the specification and the drawings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TED KAVANAUGH whose telephone number is (571) 272-4556. The examiner can normally be reached on Monday-Thursday 8AM-6PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached on 57-1272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ted Kavanaugh/
Primary Patent Examiner
Art Unit 3732
Tel: (571) 272-4556