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
In accordance with Applicant’s amendment filed 3/18/2026, claims 8-9 are amended. Claims 27-28 are new. Claim 17 remains withdrawn. Claims 7-9, 13-16, 18-28 are presented for examination on the merits.
Applicant’s amendment has overcome the previously presented objections to the drawings.
Response to Arguments
Applicant's arguments filed 3/18/2026 have been fully considered but they are not persuasive.
Regarding claim 7, Applicant argues that Wakley discloses the tubes disposed between an upper portion of a midsole and a lower portion of a midsole, not between a midsole and an outsole as claimed. Examiner respectfully disagrees. This argument is based on the way the prior art reference has named/referred to different components, not based on any alleged structural differences between the claimed structure and the prior art. The particular terminology utilized by the prior art is not pertinent to the rejection, as all applicants are permitted to be their own lexicographers and may refer to various components as they choose. As long as the prior art meets all structural limitations of the claims, it is held to read on the claims. The rejection mapped the combination of components 4 and 5 of Wakley to the claimed outsole, and these two layers combined can reasonably considered to be an outsole insofar as claimed because they are attached and together form the lowermost part of the sole that contacts the ground. Examiner notes that outsoles as generally known in the art can be multi-layered, be made of multiple constituent materials, and/or include varying levels of cushioning, so the fact that the outsole of Wakley as defined in the rejection has multiple layers does not preclude it from being considered an outsole, and nothing in the claim language as currently presented structurally distinguishes the claimed outsole from the outsole of Wakley as defined in the rejection. Examiner therefore maintains that Wakley reads on the claim as written.
Applicant’s arguments with respect to claim(s) 8, 9, 15, 18, 19, 23, 27, and 28 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. In light of Applicant’s argument, which has introduced new limitations that have altered the scope of the claims, the search has been updated and new prior art has been identified and applied, as described in the rejection below.
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.
Claim(s) 7, 21-22, 24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wakley (US 2007/0113425).
Regarding claim 7, Wakley discloses: A sole for an article of footwear, the sole comprising: a midsole (3) formed of a resilient material (ethyl vinyl acetate (EVA) foam, see paragraph 42), the midsole having first cutouts extending transversely therethrough from a medial sidewall of the midsole to a lateral sidewall of the midsole (see figure 2; “both the lower midsole portion 4 and the upper midsole portion 3 have cavities molded in with the exact shape of the portion of the embedded tubes” paragraph 58; “each tube is the exact width of the midsole so they are visible in the final product on both the lateral and medial sides” paragraph 57, since the tubes are placed in the cutouts, the cutouts must extend from the medial sidewall to the lateral sidewall); an outsole (4 and 5) having second cutouts extending transversely therethrough from a medial sidewall of the outsole to a lateral sidewall of the outsole (see figure 2; “both the lower midsole portion 4 and the upper midsole portion 3 have cavities molded in with the exact shape of the portion of the embedded tubes” paragraph 58; “each tube is the exact width of the midsole so they are visible in the final product on both the lateral and medial sides” paragraph 57, since the tubes are placed in the cutouts, the cutouts must extend from the medial sidewall to the lateral sidewall), wherein each of the first cutouts is stacked above one of the second cutouts to form a cavity (see figure 2); and a resilient tube (10) disposed within each of the cavities (see figures 1 and 2).
Regarding claim 21, Wakley discloses: The sole of claim 7, wherein medial ends and lateral ends of the tubes are flush with the medial sidewall and the lateral sidewall of the midsole (“each tube is the exact width of the midsole” paragraph 57, since the tubes are the exact width of the midsole, they are flush with the medial and lateral sidewalls of the midsole).
Regarding claim 22, Wakley discloses: The sole of claim 7, wherein the tubes are connected by connecting members (11) to form a unitary cartridge (cartridge 1; “elastomeric tubes 10 connected by an optional web or strip 11” paragraph 56; see figure 2).
Regarding claim 24, Wakley discloses: The sole of claim 7, wherein each of the first cutouts and the second cutouts has a semi-circular cross-section, such that each of the cavities is formed with a circular cross-section (“the tubes, being circular […] in cross section” paragraph 36; “both the lower midsole portion 4 and upper midsole portion 3 have cavities molded in with the exact shape of the portion of the embedded tubes” paragraph 58, therefore first and second cutouts have a semi-circular cross-section and the cavities as a whole have a circular cross-section).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wakley, as applied to claim 7 above.
Regarding claim 23, Wakley discloses: The sole of claim 7, wherein lateral ends of each of the tubes are arranged in different vertical planes from each other (“each tube is the exact width of the midsole” paragraph 57, and if the tubes are the exact width of the midsole they are understood to be flush with the external surface of the midsole; see figures 9a-9c which show that the width of the midsole varies along the length of the sole and angle of the outer surface of the midsole has a curvature. Therefore, one of ordinary skill in the art would recognize that the tubes, being the exact width of the midsole, would also necessarily vary in length to the same degree that the midsole varies in width and the medial and lateral ends of the tubes would necessarily vary in angle to the same degree that the midsole varies in angle).
However, assuming arguendo that this is not an explicit disclosure of the ends of the tubes being arranged in different vertical planes in the embodiment of figures 1-3, Wakley explicitly shows the ends of the tubes being arranged in different vertical planes in figure 9b (see annotation provided below; only one side is highlighted but it can be clearly seen that the opposite side is symmetrical). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to make the tubes with the medial ends of each of the tubes arranged in different vertical planes from each other, and the lateral ends of each of the tubes arranged in different vertical planes from each other, as shown in figure 9b of Wakley, in order to improve the external aesthetic appeal of the shoe and to ensure even cushioning performance along the entire width of the midsole. See annotated figure 9b provided below showing how the four tubes and their ends would look as modified, with dotted lines showing the planes.
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Annotated figure 9b of Wakley showing that the ends of the tubes (solid lines) in this figure are arranged in different vertical planes (dotted lines)
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Annotated figure 9b of Wakley showing what the four tubes that were shown in figures 1-3 would look like overlaid on figure 9b which shows the ends of the tubes (solid lines) would be arranged in different vertical planes (dotted lines)
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wakley as applied to claim 7, and further in view of Brown (US 4782603).
Regarding claim 27, Wakley does not explicitly disclose: The sole of claim 7 wherein each resilient tube is connected to an adjacent resilient tube by a pair of transversely-spaced connecting members.
However, Brown teaches an article of footwear with an insert of resilient tubes (60), wherein each resilient tube is connected to an adjacent resilient tube by a pair of transversely-spaced connecting members (70; see figure 3).
Brown teaches analogous art to the instant application in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to use a pair of transversely-spaced connecting members to connect each of the tubes of Wakley, as taught by Brown, instead of a single connecting member in order to make the connection of the tubes more secure and stable. Further, adding a second connecting member to connect each tube involves only a duplication of an existing component of Wakley and it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. See MPEP 2144.04(IV)(B).
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wakley/Brown as applied to claim 27, and further in view of Schoenborn (US 2006/0277792).
Regarding claim 28, Wakley as modified does not explicitly disclose: The sole of claim 27, wherein portions of the tubes positioned between the laterally-spaced connecting members are visible from the bottom of the sole.
However, Schoenborn teaches an article of footwear with a unitary cartridge of connected resilient tubes (16), wherein the tubes are visible from the exterior of the sole through an opening on a bottom side of the sole (“the heel wedge 14 defines a central opening 80 that is aligned with a corresponding absence of material in the heel region of the outsole 12. Among other things, the opening [80] permits viewing of portions of the midsole [18] and insert [16]” paragraph 34; see figure 11).
Schoenborn teaches analogous art to the instant application in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to add a central opening in the heel area of Wakley that extends through layers 4 and 5 of Wakley, as taught by Schoenborn, in order to “permit viewing of portions of the midsole and insert” (Schoenborn, paragraph 34), which creates visual interest and enhances the overall aesthetic design of the shoe. Further, adding an opening would reduce the overall weight of the shoe which will make it more comfortable to wear.
Claim(s) 8, 12-14, 16, 19-20, 25-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wakley in view of Schoenborn (US 2006/0277792).
Regarding claim 8, Wakley discloses: A sole for an article of footwear, the sole comprising: a midsole (3) formed of a resilient material (ethyl vinyl acetate (EVA) foam, see paragraph 42), the midsole having a plurality of cutouts extending transversely therethrough from a medial sidewall of the midsole to a lateral sidewall of the midsole (see figure 2; “both the lower midsole portion 4 and the upper midsole portion 3 have cavities molded in with the exact shape of the portion of the embedded tubes” paragraph 58; “each tube is the exact width of the midsole so they are visible in the final product on both the lateral and medial sides” paragraph 57, since the tubes are placed in the cutouts, the cutouts must extend from the medial sidewall to the lateral sidewall); and a unitary cartridge (cartridge 1; “elastomeric tubes 10 connected by an optional web or strip 11” paragraph 56; see figure 2) of connected resilient tubes (10; Examiner notes that either 3 of the tubes or 4 of the tubes can be considered the claimed “connected tubes”), wherein one of the tubes is disposed within each of the cutouts (“both the lower midsole portion 4 and the upper midsole portion 3 have cavities molded in with the exact shape of the portion of the embedded tubes” paragraph 58), and wherein the tubes are connected by connecting members (11) of the cartridge that extend between adjacent tubes (“elastomeric tubes 10 connected by an optional web or strip 11” paragraph 56; see figure 2), wherein the connecting members are spaced away from ends of the tubes and not visible from an exterior of the sole (see figure 2 showing the connecting members 11 are spaced away from the ends of the tubes and would not be visible from the exterior; see also figure 1 showing that the connecting members are not visible from the exterior).
Wakley does not explicitly disclose: wherein the tubes are visible from the exterior of the sole through an opening on a bottom side of the sole.
However, Schoenborn teaches an article of footwear with a unitary cartridge of connected resilient tubes (16), wherein the tubes are visible from the exterior of the sole through an opening on a bottom side of the sole (“the heel wedge 14 defines a central opening 80 that is aligned with a corresponding absence of material in the heel region of the outsole 12. Among other things, the opening [80] permits viewing of portions of the midsole [18] and insert [16]” paragraph 34; see figure 11).
Schoenborn teaches analogous art to the instant application in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to add a central opening in the heel area of Wakley that extends through layers 4 and 5 of Wakley, as taught by Schoenborn, in order to “permit viewing of portions of the midsole and insert” (Schoenborn, paragraph 34), which creates visual interest and enhances the overall aesthetic design of the shoe. Further, adding an opening would reduce the overall weight of the shoe which will make it more comfortable to wear.
Regarding claim 12, Wakley as modified discloses: The sole of claim 8, wherein medial and lateral ends of the tubes are visible from the exterior of at least one of the medial sidewall and the lateral sidewall of the midsole (see figure 1 of Wakley; “each tube is the exact width of the midsole so they are visible in the final product on both the lateral and medial sides” paragraph 57).
Regarding claim 13, Wakley as modified discloses: The sole of claim 8, wherein a hardness of the tubes is greater than a hardness of the midsole (Wakley, tubes can be made of thermoplastic polyurethane (paragraph 37); midsole can be made of ethyl vinyl acetate foam (paragraph 42); these materials are indicated as acceptable materials in the instant invention in paragraph 49 (midsole EVA) and paragraph 52 (tubes TPU), so it is understood that the hardness of the TPU tubes is greater than the hardness of the EVA foam midsole).
Regarding claim 14, Wakley as modified discloses: The sole of claim 8, wherein the tubes are more resilient than the midsole (Wakley, tubes can be made of thermoplastic polyurethane (paragraph 37); midsole can be made of ethyl vinyl acetate foam (paragraph 42); these materials are indicated as acceptable materials in the instant invention in paragraph 49 (midsole EVA) and paragraph 52 (tubes TPU), so it is understood that the TPU tubes are more resilient than the EVA foam midsole).
Regarding claim 16, Wakley as modified discloses: The sole of claim 8, wherein a medial end and a lateral end of each tube are flush with the medial sidewall and the lateral sidewall of the midsole (Wakley, “each tube is the exact width of the midsole” paragraph 57, since the tubes are the exact width of the midsole, they are flush with the medial and lateral sidewalls of the midsole).
Regarding claim 19, Wakley as modified appears to disclose: The sole of claim 8, wherein the tubes have varying lengths (Wakley, “each tube is the exact width of the midsole” paragraph 57; see figures 2 and 3 which appear to depict the tubes having varying lengths; see figures 9a-9c which show that the width of the midsole varies. Therefore, one of ordinary skill in the art would recognize that the tubes, being the exact width of the midsole, would also necessarily vary in length to the same degree that the midsole varies in width).
However, assuming arguendo that this is not an explicit disclosure of the tubes having varying lengths, Wakley also teaches that “the geometry and dimension of the tubes can vary to provide more or less cushioning” (paragraph 38) and the tubes can “provide selective cushioning along the length of the shoe by varying the size, dimension, and stiffness of each tube” (paragraph 40), which indicates that the length of the tubes is a result-effective variable that can be optimized depending on the desired degree of cushioning. Wakley teaches analogous art to the instant application in the field of footwear with tubular cushioning elements. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to make the tubes with varying lengths in order to optimize the amount of cushioning based on specific user needs or a particular desired activity.
Regarding claim 20, Wakley as modified discloses: The sole of claim 8, wherein any two of the tubes are spaced by a distance to allow compression of the tubes (see figure 2 of Wakley showing the tubes being spaced by a distance; “when the heel strikes the ground, the force of impact tends to compress the tubes” paragraph 46).
Regarding claim 25, Wakley as modified discloses: The sole of claim 8, wherein a wall thickness of each tube is constant along a transverse direction of the sole (see figure 6d of Wakley showing the constant wall thickness).
Regarding claim 26, Wakley as modified discloses (Examiner notes that for the purposes of this claim, the interpretation described in the rejection of claim 8 above that 4 tubes are the “connected resilient tubes” will be used): The sole of claim 8, wherein the unitary cartridge comprises four connected resilient tubes (see figure 3 of Wakley; the cartridge 1 has four connected tubes 10).
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Claim(s) 9, 15 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wakley/Schoenborn as applied to claim 8, and further in view of Acheson (US 7565754).
Regarding claim 9, Wakley as modified discloses (Examiner notes that for the purposes of this claim, the interpretation described in the rejection of claim 8 above that 3 tubes are the “connected resilient tubes” will be used): The sole of claim 8, the unitary cartridge further comprising a positioning tab extending from a center of the cartridge (see annotated figure 3 below) and appears to show: the positioning tab disposed against a sidewall of the midsole (see figure 1 where the tube is disposed against the sidewall of the midsole).
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However, assuming arguendo that figure 1 of Wakley does not sufficiently teach the positioning tab being disposed against a sidewall of the midsole, Acheson teaches a unitary cartridge (150) of connected resilient tubes (150a), wherein one of the tubes is disposed within a cutout (“medial and lateral heel pieces 148/149 are molded around tubular insert 150 such that at least a portion of trumpet shaped tubes 150a form an exterior surface of medial and lateral heel pieces 148/149 and such that tubular inserts 150 define horizontal bores 151” column 5, lines 38-43), and wherein the tubes are connected by connecting members (150b) of the cartridge that extend between adjacent tubes (see figure 1), and the unitary cartridge further comprising a positioning tab (150c) disposed against a sidewall of the midsole (“lateral and medial heel pieces 148/149 are molded such that extension 150c forms part of an exterior surface of lateral and medial heel pieces 148/149” column 5, lines 49-51).
Acheson teaches analogous art to the instant application in the field of footwear with tubular cushioning elements. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to add an extension, as taught by Acheson, to the rearmost tube of Wakley (which Examiner notes is considered part of the positioning tab, as shown in annotated figure 3 of Wakley above) that will extend around the heel of the shoe in order to allow for a location for “a logo or other indicia” to be displayed in a prominent position on the footwear (see column 5, lines 44-45 of Acheson). Moreover, given that Acheson teaches “lateral and medial heel pieces 148/149 are molded such that extension 150c forms part of an exterior surface of lateral and medial heel pieces 148/149” (column 5, lines 49-51), it further would have been obvious for the extension on Wakley as modified to be disposed directly against the sidewall of the midsole so that there is no gap between the extension and the midsole where dirt or debris could collect.
Regarding claim 15, Wakley as modified does not explicitly disclose: The sole of claim 8, wherein each of the tubes comprises a flange at a medial end and a lateral end.
However, Acheson teaches an article of footwear with a plurality of tubes (1250a) wherein each of the tubes comprises a flange at the end (1250c).
Acheson teaches analogous art to the instant application in the field of footwear with tubular cushioning elements. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to add a flange, as taught by Acheson, to the medial and lateral end of the tubes of Wakley in order to “[help] with the placement and visibility of tubular insert” (Acheson, column 9, lines 24-25), which would make manufacturing easier and improve the aesthetic appeal of the footwear.
Regarding claim 18, Wakley as modified appears to disclose: The sole of claim 15, wherein medial ends of each of the tubes are arranged in different vertical planes from each other, and lateral ends of each of the tubes are arranged in different vertical planes from each other (“each tube is the exact width of the midsole” paragraph 57, and if the tubes are the exact width of the midsole they are understood to be flush with the external surface of the midsole; see figures 9a-9c which show that the width of the midsole varies along the length of the sole and angle of the outer surface of the midsole has a curvature. Therefore, one of ordinary skill in the art would recognize that the tubes, being the exact width of the midsole, would also necessarily vary in length to the same degree that the midsole varies in width and the medial and lateral ends of the tubes would necessarily vary in angle to the same degree that the midsole varies in angle).
However, assuming arguendo that this is not an explicit disclosure of the ends of the tubes being arranged in different vertical planes in the embodiment of figure 1, Wakley explicitly shows the ends of the tubes being arranged in different vertical planes in figure 9b (see annotation provided with the 35 USC 103 rejection of claim 23 above; only one side is highlighted but it can be clearly seen that the opposite side is symmetrical). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to make the tubes with the medial ends of each of the tubes arranged in different vertical planes from each other, and the lateral ends of each of the tubes arranged in different vertical planes from each other, as shown in figure 9b of Wakley, in order to improve the external aesthetic appeal of the shoe and to ensure even cushioning performance along the entire width of the midsole. See annotated figure 9b provided with the 35 USC 103 rejection of claim 23 above showing how the four tubes and their ends would look as modified, with dotted lines showing the planes.
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 BRIANNA T DUCKWORTH whose telephone number is (571)272-1458. The examiner can normally be reached M-F 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Ostrup can be reached at 571-272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIANNA T. DUCKWORTH/Examiner, Art Unit 3732
/JAMESON D COLLIER/Primary Examiner, Art Unit 3732
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