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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/02/2026 has been entered.
Response to Amendment
The amendments filed with the written response received on 01/02/2026 have been considered and an action on the merits follows. As directed by the amendment, claim 1 has been amended. Accordingly, claims 1-15 are pending in this application.
Drawings
The replacement drawings were received on 01/02/2026. These drawings are acceptable and hereby entered.
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 product before the coupling of the upper portion to the outsole portion step.
However, it is noted that a wearer of a shoe may not considered a shoe “wearable” until after a preferred ornamental design is subtractively added to a given article of footwear. What is considered “wearable,” in a fashion sense for instance, may vary from wearer to wearer. The term “wearable” is broadly construed in this instance.
In addition, Hess does teach the designs on the upper can be cut out at any time prior to completing of the shoe with stitching (page 2, lines 20-23). Therefore, after cutting out the sections (5), the article would be readily understood by those skilled in the art as being an intermediate product because the shoe is not yet completed for wearing until after further processing (such as stitching), whether for decorative purposes or not. Hess makes it clear that the intermediate product is still subject to subtractive modification. This intermediate product because the cutting out is not considered wearable because an article that is still in-process and may not be ready for consumer use and can be reasonably considered a “non-wearable shoe blank.” It would have been obvious to one of ordinary skill in the art before the effective filing date to recognize that the intermediate product in Hess constituted a shoe blank that is not yet wearable and to treat it as such when carrying out the subtractive cutting step because even decorative operations may be necessary before shoe is acceptable for consumer use or wear, and an unfinished article lacking its intended decorative features may not be considered suitable for wear by consumers. Therefore, the claimed characterization of the shoe blank as a “non-wearable product” therefore represents nothing more than an obvious description of the intermediate article described by Hess when view under the broadest reasonable interpretation and in light of the knowledge of one of ordinary skill in the art.
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
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/ERICK I LOPEZ/Examiner, Art Unit 3732