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
The amendments filed with the written response received on 05/20/2026 have been considered and an action on the merits follows. As directed by the amendment, claims 1 has been amended. Accordingly, claims 1-15 are pending in this application.
Response to Arguments
Applicant's arguments, filed 05/20/2026, with respect to the rejection of claims 1-15 under 35 USC § 103 have been considered but are moot because the arguments do not apply to the current grounds of rejection. Applicant's arguments, which appear to be drawn only to the newly amended limitations and previously presented rejections, have been considered but are moot in view of the updated grounds of rejection.
Further, applicant's arguments have been fully considered but are not persuasive.
Applicant argues that the claims require a functional transformation from a "non-wearable stock product" to a wearable shoe, whereas Hess merely performs decorative cut-outs on an already wearable shoe.
However, it is noted that the claim does not define what constitutes a "wearable" or "non-wearable" product, nor does the specification provide an objective standard for making that determination. Applicant's present argument provides that lasting alone transforms the article into a wearable shoe. However, under this logic, the article shown in Figure 4 of Applicant’s drawing would likewise be considered wearable before the subsequent subtractive removal step. This is inconsistent and in conflict with Applicant's assertion that wearability first arises only after material is removed. Looking to the broadest reasonable interpretation, the term "wearable" encompasses an article that is suitable or ready for wear, and the claimed characterization of the intermediate article as "non-wearable" is not limited to any particular structural condition. In support, Dictionary.com defines wearable as “appropriate suitable, or ready for wearing.” Further, Paragraph 0042 states that the upper portion is formed and tightened around the shoe last "to create the shape/silhouette." Thus, the specification does not establish a clear structural distinction between the claimed shoe blank and the intermediate footwear article disclosed by Hess.
Applicant further argues that the cut-outs of Hess are only decorative. However, Hess expressly teaches that the shoe remains subject to further manufacturing operations before completion (page 2, lines 20-23 of Hess). One skilled in the art would reasonably understand that an article that is still undergoing manufacturing, and is not yet completed for its intended commercial form, as an intermediate stock product. Moreover, removal of material from the upper inherently changes the geometry of the upper regardless of whether the resulting openings are decorative, and one skilled in the art would further understand the removing material from the upper can increase the ventilation to the foot, and reduce the overall weight of the article. Both serving functional objectives. Thus, the claimed recitation that subtractive removal changes the geometry of the upper does not distinguish over Hess.
Applicant also argues that Hess does not disclose a "non-wearable stock product from which multiple styles of footwear may be produced." However, this language simply characterizes the intended manufacturing use of the intermediate article rather than imposing a structural limitation on the shoe blank itself. The incomplete shoe of Hess, prior to cutting out and/or stitching, likewise serves as an intermediate product that is subsequently modified by subtractive removal to obtain a desired final appearance. Whether that appearance is characterized as a different "style" or a different ornamental design does not impart a structural distinction to the intermediate article itself.
Accordingly, Applicant has not identified patentable features that patentably distinguishes the claimed shoe blank from the intermediate footwear article taught by Hess.
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.
Claims 1, 4, 6, 8-10, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over US 1,647,914 A to Hess.
For claim 1, Hess discloses a method for forming footwear (page 1, lines 1-7), comprising: forming a shoe blank, wherein: the shoe blank comprises: an upper portion (page 1, lines 84-87) and an outsole component (page 2, lines 19-20), and forming the shoe blank comprises coupling the upper portion to the outsole component (page 2, lines 18-20); applying a pattern to a surface of the shoe blank (page 1, lines 88-93); and subtractively removing material from the shoe blank, comprising cutting away material from the upper portion along the applied pattern (page 2, lines 20-23), wherein: the applied pattern defines a footwear style (ornamental footwear with accurate, neat appearing design, page 1, lines 48-54) the material removed corresponds to the applied pattern (page 1, lines 103-110) the subtractively removing the material changes a geometry of the upper portion (the upper, after the cut outs are performed, comprises a geometry having cutouts not previously present before the cut outs are made), and the change in geometry from the subtractively removing the material causes the upper portion to be wearable by a user, forming a wearable shoe (the resulting upper with cut out openings is a completed shoe having accurate undistorted designs which is then wearable, page 1, line 55 to page 2 line 63).
Hess does not explicitly disclose wherein the shoe blank is "a non-wearable stock product from which multiple styles of footwear may be produced." However, this newly added language does not patentably distinguish the claimed method over Hess.
First, the recitation that the shoe blank is a "stock product from which multiple styles of footwear may be produced" simply characterizes the intended manufacturing use of the intermediate article rather than imposing any additional structural limitation on the shoe blank itself. As discussed above, Hess discloses an intermediate footwear article that is then modified by subtractively removing material from the upper to obtain a desired final footwear configuration. Whether the resulting configuration is a different footwear "style" or a different aesthetic design does not impart a structural distinction to the intermediate article.
Next, as provided in the response to arguments above, the term "non-wearable" is not expressly defined in the specification. Accordingly, under the broadest reasonable interpretation, the term "wearable" encompasses an article that is suitable or ready for wear, and the claimed characterization of the intermediate article as "non-wearable" is not limited to any particular structural condition. An article that remains subject to additional manufacturing operations before completion may reasonably be regarded as a non-wearable intermediate product. Hess expressly teaches that the upper may be cut out prior to completion of the shoe with stitching (page 2, lines 20-23), thereby disclosing an intermediate article that is still undergoing manufacture before completion.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date to regard the intermediate footwear article of Hess as the claimed shoe blank, including a non-wearable stock product, because the article remains subject to additional manufacturing operations before reaching its completed commercial form. Characterizing the intermediate article as a "stock product" or "shoe blank" from which a footwear style is produced simply describes the intended production process, and does not impart a patentably distinction over the intermediate footwear article disclosed by Hess. Applicant's own specification does not establish a clear structural distinction based upon the recited "non-wearable" limitation. Paragraph 0042 describes the upper as being formed and tightened around the shoe last to create the shape or silhouette of the footwear before the subtractive cutting step. The specification does not provide objective support that the subtractive removal of material alone constitutes the point at which the article first becomes structurally wearable.
For claim 4, Hess discloses the method of claim 1, further comprising positioning a shoe last into a cavity of the shoe blank prior to the selectively removing the material from the shoe blank, wherein the shoe last, when inserted into the shoe blank, provides internal support to the upper portion as the material is subtractively removed (page 2, lines 14-29).
For claim 6, Hess discloses the method of claim 1, wherein the forming the shoe blank comprises: forming the upper portion; and forming the outsole component (page 1, lines 84-87; and page 2, lines 18-20).
For claim 8, Hess discloses the method of claim 6, wherein the forming the shoe blank comprises coupling the upper portion to the outsole component (page 2, lines 18-20).
For claim 9, Hess discloses the method of claim 8, wherein the coupling the upper portion to the outsole component comprises securing the upper portion to the outsole component via: cementing; gluing; sewing; nailing; or tacking (sewing, page 2, lines 18-20).
For claim 10, Hess discloses the method of claim 8, wherein the coupling the upper portion to the outsole component comprises tightening the upper portion around a shoe last (page 2, lines 14-20).
For claim 14, Hess discloses the method of claim 1, further comprising applying the pattern to a surface of the shoe blank (page 1, lines 84-96; and page 2, lines 5-13).
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Hess as applied to claim 1 above, and further in view of US 2013/0104423 A1 to Hatfield.
For claim 2, Hess discloses the method of claim 1, but does not specifically disclose further comprising applying one or more closures to the wearable shoe.
However, Hess does show the article of footwear may comprise straps (see straps in figs. 1 and 3).
Attention is also directed to Hatfield teaching an article of footwear (abstract of Hatfield) wherein lacing holes may be die-cut or stamped into strap members for purposes of receiving a lace or a cord (para 0151 of Hatfield). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein Hess would be modified to comprise the step of applying one or more closures to the wearable shoe in the form of lacing hole members for purposes of receiving and comprising a lace, as taught by Hatfield (para 0151 of Hatfield).
For claim 3, the modified Hess teaches the method of claim 2, wherein the one or more closures comprise one or more of: shoelaces; straps; and snaps (see discussion for claim 2 wherein the closures are laces).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Hess as applied to claim 1 above, and further in view of US 0,914,376 A to Baker.
For claim 5, Hess teaches the method of claim 4, wherein: the shoe last comprises a plurality of sections (sections of the last), but does not specifically disclose the positioning the shoe last into the cavity comprises securing relative positions of the plurality of sections of the shoe last via one or more locking mechanisms.
However, attention is directed to Baker teaching an analogous method of forming footwear (page 1, lines 11-17 of Baker). Specifically, Baker teaches the positioning the shoe last into the cavity comprises securing relative positions of the plurality of sections of the shoe last via one or more locking mechanisms for purposes of securing the upper being worked on (page 2, lines 59-85 of Baker). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein Hess would be further modified wherein the positioning the shoe last into the cavity comprises securing relative positions of the plurality of sections of the shoe last via one or more locking mechanisms for purposes of securing the upper being worked on, as taught by Baker (page 2, lines 59-85 of Baker).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Hess as applied to claim 1 above, and further in view of US 2,549,985 A to Normington.
For claim 7, Hess discloses the method of claim 6, but does not specifically disclose wherein the forming the upper portion comprises laminating two or more layers of material together.
However, Hess does teach the upper also comprises a lining layer (2).
Attention is also directed to Normington teaching an analogous method of forming a shoe upper (col. 1, lines 13-45). Specifically, Normington teaches an upper composed of laminated sheet material having an integral coating or lining of plastic material which will increase its tensile strength and gives improved body or substance to the leather (col. 1, lines 22-33 of Normington). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein Hess would be modified wherein the forming the upper portion comprises laminating two or more layers of material together for purposes of increasing the upper tensile strength and giving the upper material an improved body, as taught by Normington (col. 1, lines 22-33 of Normington).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Hess as applied to claim 1 above, and further in view of US 3,343,223 to Ludwig.
For claim 11, Hess discloses the method of claim 1, but does not specifically disclose wherein the forming the shoe blank comprises injection-molding material into a shape of the shoe blank.
However, attention is directed to Ludwig teaching an analogous method of forming footwear comprising forming a shoe using injection molding material into a shape of a shoe blank (col. 1, lines 24-44; and col. 3, lines 1-12 of Ludwig). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein Hess would be further modified wherein the forming the shoe blank comprises injection-molding material into a shape of the shoe blank for purposes of providing greater flexibility in the upper and greater wear in the bottom, as taught by Ludwig (col. 1, lines 15-17 of Ludwig).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Hess as applied to claim 1 above, and further in view of US 2014/0020192 A1 to Jones.
For claim 12, Hess discloses the method of claim 1, but does not specifically disclose wherein the forming the shoe blank comprises 3D printing the shoe blank.
However, attention is directed to Jones teaching an analogous method of forming footwear comprising forming upper and sole components using 3D printing (para 0067 of Jones). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein Hess would be modified wherein the forming the shoe blank comprises 3D printing the shoe blank for purposes of imparting customized material properties such as increased strength, rigidity, support, flexibility, abrasion resistance, or variations thereof, based on desired material properties for specific portions of the upper and the article of footwear as a whole, as taught by Jones (para 0057 of Jones).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Hess as applied to claim 1 above, and further in view of US 1,956,969 A to Ayers.
For claim 13, Hess discloses the method of claim 1, but does not specifically disclose further comprising applying one or more dyes or pigments to the shoe blank.
However, attention is directed to Ayers teaching an analogous method of forming footwear (page 1, lines 41-59). Specifically, Ayers teaches imparting designs into shoe uppers using dyes, inks, pigments, or the like for purposes of providing an article of footwear with a highly attractive appearance (page 1, lines 31-40; and page 2, lines 93-106 of Ayers). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein Hess would be modified wherein to comprise further applying one or more dyes or pigments to the shoe blank for purposes of providing an article of footwear with a highly attractive appearance, as taught by Ayers (page 1, lines 31-40; and page 2, lines 93-106 of Ayers).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Hess as applied to claim 1 above, and further in view of US 2,507,726 to L’Hollier.
For claim 15, Hess discloses the method of claim 14, but does not specifically disclose wherein the applying the pattern comprises tracing a pattern stencil.
However, attention is directed to L’Hollier teaching an analogous method of forming an article of footwear (col. 1, lines 1-13of L’Hollier). Specifically, L’Hollier teaches using a stencil to trace out a pattern on upper for purposes of cutting and removing a portion of the upper with precision (col. 1, lines 25 to col. 2, line 2 of L’Hollier). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein Hess would be further modified wherein the applying the pattern comprises tracing a pattern stencil for purposes of cutting and removing a portion of the upper with precision, as taught by L’Hollier (col. 1, lines 25 to col. 2, line 2 of L’Hollier).
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 ERICK I LOPEZ whose telephone number is (571)272-3262. The examiner can normally be reached Monday - Friday: 9:00am - 5:30pm 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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/ERICK I LOPEZ/Examiner, Art Unit 3732
