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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02 June 2026 has been entered.
Response to Amendments
The amendments filed with the written response received on 02 June 2026 have been considered and an action on the merits follows. As directed by the amendment, claim(s) 1 and 20 has/have been amended, claim(s) 17 is/are canceled, claim(s) 21-25 has/have been added, and claim(s) 3, 6, 10, and 16 has/have been withdrawn. Accordingly, claim(s) 1-16 and 18-25 is/are pending in this application with an action on the merits to follow regarding claim(s) 1-2, 4-5, 7-9, 11-15, and 18-25.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 22 is/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.
Claim 22, is/are indefinite as it/they recite(s) “a thinned area corresponding to at least a portion of the projection field”. It is unclear what structure is considered a “thinned area” and it is unclear if the thinned area is part of the projection field base, the projections, or the spacing between the projections. Figs. 2, 6A-6C, and 10-11 show multiple different interpretations of a “thinned area” within the projection field. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as “a thinned area corresponding to at least a portion of the projection field” being any structure that is narrower within the projection field. Clarification is respectfully requested.
Claim Rejections - 35 USC § 103
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) 1-2, 9, 18-20, 22, and 24-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lyden US 6948264 in view of Healy US 7287343.
Regarding Independent Claim 1, Lyden discloses a sole structure (Fig. 1-2) having a ground-facing surface (Lyden Annotated Fig. 2; Col. 5:12-15) and an upper-facing surface (Lyden Annotated Fig. 2), the sole structure comprising: a sole member (Fig. 1 #20.1) made from one or more parts (Fig. 2 shows a cross-section of the many part of the sole member #20.1) and including a base surface (Lyden Annotated Fig. 2), a medial side (Figs. 1-2 #22), and a lateral side (Figs. 1-2 #21); a plurality of primary traction cleats (Figs. 1-2 #25) extending in a direction away from the base surface (Fig. 2 shows traction element #25 extending away from the base surface #27), wherein each cleat of the plurality of primary traction cleats extends from the base surface to a free end surface (Lyden Annotated Fig. 2); and a projection field (Fig. 1 #27) engaged with an exterior surface of the base surface (Lyden Annotated Fig. 2) or integrally formed with at least one or more parts of the sole member (Figs. 1-2), wherein the projection field comprises a plurality of projections (Figs. 1-2 #29) that extend beyond the base surface (Fig. 2) and have exposed free ends (Fig. 2 #32), wherein the plurality of projections includes at least 20 projections in the projection field (Fig. 1 shows at least 20 projections), wherein at least a majority of the plurality of projections in the projection field readily bend under force applied by weight of a user of the sole structure (Col. 2:3-8), and wherein when the sole structure is supported on the ground-facing surface on a horizontal support surface (Col. 6:48-67; “horizontal support surface” being the ground the wearer walks on as the shoe’s sole is on the ground in a horizontal alignment; Fig. 5.1 shows a different embodiment of this horizontal alignment), a first subset of the plurality of projections have a longitudinal length (Fig. 2; Abstract) sufficient such that the free ends of the plurality of projections of the first subset extend toward the horizontal support to a respective projection of the first subset (Fig. 2; Col. 6:48-67).
Lyden does not expressly disclose that the plurality of projections free ends extend toward the horizontal support surface beyond the free end surface of a closest primary traction cleat of the plurality of primary traction cleats to a respective projection of the first subset.
Healy teaches a footwear with articulating projections (Healy Annotated Fig. 11) that extend toward the horizontal support surface beyond the free end surface of a closest primary traction cleat of the plurality of primary traction cleats to a respective projection of the first subset (Healy Annotated Fig. 11).
Both Lyden and Healy teach analogous inventions in the art of footwear with projection elements. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Lyden with the teachings of Healy such that the projections would be longer than the traction cleats to allow the shoe sole to “adjust[s] to uneven terrain in response to the normal loading of the shoe on rough or uneven surfaces” (Healy Col. 1:45-48).
The modified sole structure of Lyden does not expressly disclose wherein the projection field is configured in the sole structure to transmit force incident on the plurality of projections from a ball through the projection field and to a wearer's foot. However, the modified sole structure of Lyden discloses the structures of the plurality of projections. Under the principals of combination, if a prior art device in its normal and usual operation, would obviously perform the method or function claimed then the method or function claimed would be considered obvious by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method or function, it can be assumed the device will perform the claims process. In re King, 801 F2.d 1324, 231 USPQ 136 (Fed Cir. 1986) MPEP 2112.02.
Examiner notes that italicized limitations in the Prior Art rejections are functional and do not positively recite a structural limitation, but instead require the ability of the structure to perform and/or function. As the modified Prior Art of Lyden discloses the structure of the sole structure, there would be a reasonable expectation for the sole structure to perform such functions as explained after each functional limitation.
Regarding Claim 2, the modified sole structure of Lyden discloses the sole structure according to claim 1, wherein the projection field includes a projection field base (Fig. 2 #28) having a first surface (Lyden Annotated Fig. 2) and a second surface opposite the first surface (Lyden Annotated Fig. 2), and wherein the plurality of projections originate at the second surface (Fig. 2) and extend from the projection field base in a direction away from the first surface and the second surface (Fig. 2).
Regarding Claim 9, the modified sole structure of Lyden discloses the sole structure according to claim 1, wherein at least a majority of the projection field is located in a forefoot region of the sole structure (Lyden Annotated Fig. 1).
Regarding Claim 18, the modified sole structure of Lyden discloses the sole structure according to claim 1, wherein the sole member includes an outsole component that includes the plurality of primary traction cleats, and wherein the projection field is integrally formed with the outsole component (Figs. 1-2).
Regarding Claim 19, the modified sole structure of Lyden discloses the sole structure according to claim 1, wherein a portion of the projection field extends between at least two of the plurality of primary traction cleats on one side of the sole member (Fig. 1).
Regarding Independent Claim 20, Lyden discloses an article of footwear (Figs. 1-2; Abstract), comprising: an upper (Col. 7:22-39 #43) ; and a sole structure engaged with the upper (Col. 7:22-39), the sole structure having a ground-facing surface (Lyden Annotated Fig. 2; Col. 5:12-15) and an upper facing surface (Lyden Annotated Fig. 2), the sole structure comprising: a sole member (Fig. 1 #20.1) made from one or more parts (Fig. 2 shows a cross-section of the many part of the sole member #20.1) and including a base surface (Lyden Annotated Fig. 2), a medial side (Figs. 1-2 #22), and a lateral side (Figs. 1-2 #21); a plurality of primary traction cleats (Figs. 1-2 #25) extending in a direction away from the base surface (Fig. 2 shows traction element #25 extending away from the base surface #27), wherein each cleat of the plurality of primary traction cleats extends from the base surface to a free end surface (Lyden Annotated Fig. 2); and a projection field (Fig. 1 #27) engaged with an exterior surface of the base surface (Lyden Annotated Fig. 2) or integrally formed with at least one or more parts of the sole member (Figs. 1-2), wherein the projection field comprises a plurality of projections (Figs. 1-2 #29) that extend beyond the base surface and have exposed free ends (Fig. 2 #32), wherein the plurality of projections includes at least 20 projections in the projection field (Fig. 1 shows at least 20 projections), wherein at least a majority of the plurality of projections in the projection field readily bend under force applied by weight of a user of the sole structure (Col. 2:3-8), and wherein when the sole structure is supported on the ground-facing surface on a horizontal support surface (Col. 6:48-67; “horizontal support surface” being the ground the wearer walks on as the shoe’s sole is on the ground in a horizontal alignment; Fig. 5.1 shows a different embodiment of this horizontal alignment), a first subset of the plurality of projections have a longitudinal length (Fig. 2; Abstract) sufficient such that the free ends of the plurality of projections of the first subset extend toward the horizontal support to the respective projection of the first subset (Fig. 2; Col. 6:48-67).
Lyden does not expressly disclose that the plurality of projections free ends of the plurality of projections of the first subset extend toward the horizontal support surface beyond the free end surface of a closest primary traction cleat of the plurality of primary traction cleats to the respective projection of the first subset.
Healy teaches a footwear with articulating projections (Healy Annotated Fig. 11) that extend toward the horizontal support surface beyond the free end surface of a closest primary traction cleat of the plurality of primary traction cleats to the respective projection of the first subset (Healy Annotated Fig. 11).
Both Lyden and Healy teach analogous inventions in the art of footwear with projection elements. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Lyden with the teachings of Healy such that the projections would be longer than the traction cleats to allow the shoe sole to “adjust[s] to uneven terrain in response to the normal loading of the shoe on rough or uneven surfaces” (Healy Col. 1:45-48).
The modified sole structure of Lyden does not expressly disclose wherein the projection field is configured in the sole structure to transmit force incident on the plurality of projections from a ball through the projection field and to a wearer's foot. However, the modified sole structure of Lyden discloses the structures of the plurality of projections. Under the principals of combination, if a prior art device in its normal and usual operation, would obviously perform the method or function claimed then the method or function claimed would be considered obvious by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method or function, it can be assumed the device will perform the claims process. In re King, 801 F2.d 1324, 231 USPQ 136 (Fed Cir. 1986) MPEP 2112.02.
Regarding Claim 22, the modified sole structure of Lyden discloses the sole structure according to claim 1, wherein the base surface of the sole member includes a thinned area corresponding to at least a portion of the projection field (Fig. 1 shows areas within the projection field #27 that are closer to the traction elements and the edges of the field than others, thus are in “thinned” areas).
Regarding Claim 24, the modified sole structure of Lyden discloses the sole structure according to claim 1, wherein the projection field is a separate part engaged with at least one of the one or more parts of the sole member (Fig. 2).
Regarding Claim 25, the modified sole structure of Lyden discloses the sole structure according to claim 1, but does not expressly disclose wherein a thickness of the base surface of the sole member in an area corresponding to at least a portion of the projection field or a hardness of a material of the plurality of projections is selected to transmit force from contact with a ball to a wearer's foot. The modified sole structure of Lyden does not expressly disclose wherein the projection field is configured in the sole structure to transmit force incident on the plurality of projections from a ball through the projection field and to a wearer's foot. However, the modified sole structure of Lyden discloses the structures of the plurality of projections. Under the principals of combination, if a prior art device in its normal and usual operation, would obviously perform the method or function claimed then the method or function claimed would be considered obvious by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method or function, it can be assumed the device will perform the claims process. In re King, 801 F2.d 1324, 231 USPQ 136 (Fed Cir. 1986) MPEP 2112.02.
Claim(s) 4-5, 7, 11-12, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lyden and Healy as applied to claim 1 above, and further in view of Dassler US 4402145.
Regarding Claim 4, the modified sole structure of Lyden discloses the sole structure according to claim 1, wherein the plurality of primary traction cleats includes a plurality of medial side primary traction cleats (Fig. 1 #25 medial side) located on the medial side of the sole member (Fig. 1 #22) and extending in a direction away from the base surface (Fig. 2 shows traction element #25 extending away from the base surface #27) and a plurality of lateral side primary traction cleats (Fig. 1 #25 lateral side) located on the lateral side of the sole member (Fig. 1 #21) and extending in a direction away from the base surface, wherein a central space is defined between interior extents of the plurality of medial side primary traction cleats and the plurality of lateral side primary traction cleats (Lyden Annotated Fig. 1), wherein the projection field is located at least partially in the central space (Fig. 1), but does not expressly disclose wherein the lengths of the first subset of the plurality of projections are at least 8 mm.
Dassler teaches a shoe with a plurality of projections that are at least 8mm (Col. 3, l. 30-35).
Both Lyden (as modified by Healy) and Dassler teach analogous inventions in the art of footwear with projection elements. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Lyden (as modified by Healy) with the teachings of Dassler such that the projections would be at least 8mm to allow for “sufficient ground contact and thus adequate nonskid behavior are ensured even in case of extreme ground conditions and difficult phases of the athletic activity” (Dassler Col. 1:50-53). Further, the length of the projections is a results effective variable with the results being a change in the composition and size of the opening itself. It would have been obvious to one having ordinary skill in the art at the time the invention was made to make the length of the projections atleast 8mm to allow the shoe the proper amount of shear force resistance during activity, and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
Regarding Claim 5, the modified sole structure of Lyden discloses the sole structure according to claim 4, wherein the projection field includes a projection field base (Fig. 2 #28) having a first surface (Lyden Annotated Fig. 2) and a second surface opposite the first surface (Lyden Annotated Fig. 2), and wherein the plurality of projections originate at the second surface (Fig. 2) and extend from the projection field base in a direction away from the first surface and the second surface (Fig. 2).
Regarding Claim 7, the modified sole structure of Lyden discloses the sole structure according to claim 4, wherein a portion of the projection field extends between at least two of the plurality of medial side primary traction cleats (Fig. 1) and/or a portion of the projection field extends between at least two of the plurality of lateral side primary traction cleats (Fig. 1).
Regarding Claim 11, the modified sole structure of Lyden discloses the sole structure according to claim 1, wherein there are at least 20 projections of the plurality of projections (Fig. 1), but does not expressly disclose the plurality of projections have a largest transverse cross sectional dimension of 8 mm or less.
Dassler teaches a shoe with a plurality of projections that have a basal diameter of 8mm or less (Col. 3:41-42).
Both Lyden (as modified by Healy) and Dassler teach analogous inventions in the art of footwear with projection elements. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Lyden (as modified by Healy) with the teachings of Dassler such that the projections would be less than 8mm wide to allow the nubs to “grip the ground excellently even in case of a relatively greatly inclined position of the athlete or in case of uneven terrain, and moreover enlarge the contact area between shoe and ground” (Dassler Col. 2:44-48).
Regarding Claim 12, the modified sole structure of Lyden discloses the sole structure according to claim 11, but does not expressly disclose wherein said at least 20 projections taper in cross sectional shape in a length dimension direction to a smallest transverse cross sectional size at the free ends of the respective projections.
Dassler teaches a shoe with a plurality of projections that taper in cross sectional shape in a length dimension direction to a smallest transverse cross sectional size at the free ends of the respective projections (Dassler Fig. 2 #7).
Both Lyden (as modified by Healy) and Dassler teach analogous inventions in the art of footwear with projection elements. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Lyden (as modified by Healy) with the teachings of Dassler such that the projections would taper from a larger dimension to a smaller dimension so that the projections could more easily “grip the ground excellently even in case of a relatively greatly inclined position of the athlete or in case of uneven terrain, and moreover enlarge the contact area between shoe and ground” (Dassler Col. 2:44-48).
Regarding Claim 21, the modified sole structure of Lyden discloses the sole structure according to claim 1, but does not expressly disclose wherein the first subset of the plurality of projections have a length dimension of at least 8 mm.
Dassler teaches a shoe with a plurality of projections that are at least 8mm (Col. 3, l. 30-35).
Both Lyden (as modified by Healy) and Dassler teach analogous inventions in the art of footwear with projection elements. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Lyden (as modified by Healy) with the teachings of Dassler such that the projections would be at least 8mm to allow for “sufficient ground contact and thus adequate nonskid behavior are ensured even in case of extreme ground conditions and difficult phases of the athletic activity” (Dassler Col. 1:50-53).
Claim(s) 8 and 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lyden and Healy as applied to claim 1 above.
Regarding Claim 8, the modified sole structure of Lyden discloses the sole structure according to claim 1, but does not expressly disclose wherein the projection field defines an area of at least 2400 mm2. However, the outermost extents of the plurality of projections in the projection field defining an area of at least 2400 mm2 is a results effective variable with the results being a change in the composition and size of the opening itself. It would have been obvious to one having ordinary skill in the art at the time the invention was made to make the outermost extents of the plurality of projections in the projection field define an area of at least 2400 mm2 to allow the shoe the proper amount of shear force resistance during activity, and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
Regarding Claim 13, the modified sole structure of Lyden discloses the sole structure according to claim 1, but does not expressly disclose wherein at least 20 projections of the plurality of projections have a largest transverse cross sectional dimension of 5 mm or less. However, the largest transverse cross sectional dimension of the projections being 5 mm or less is a results effective variable with the results being a change in the composition and size of the projection itself. It would have been obvious to one having ordinary skill in the art at the time the invention was made to make the largest transverse cross sectional dimension of 5 mm or less to allow the shoe the proper amount of space to fit the desired amount of projections on the base surface, and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
Regarding Claim 14, the modified sole structure of Lyden discloses the sole structure according to claim 1, wherein at least 20 projections of the plurality of projections have a rounded transverse cross sectional shape but does not expressly disclose the projections have a diameter of 8 mm or less. However, the projections have a diameter of 8 mm or less is a results effective variable with the results being a change in the composition and size of the projection itself. It would have been obvious to one having ordinary skill in the art at the time the invention was made to make the projections have a diameter of 8 mm or less to allow the shoe the proper amount of space to fit the desired amount of projections on the base surface, and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
Regarding Claim 15, the modified sole structure of Lyden discloses the sole structure according to claim 1, wherein at least 20 projections of the plurality of projections have a rounded transverse cross sectional shape (Figs. 1-4) but does not disclose the cross sectional shape with a diameter of 5 mm or less. However, the largest transverse cross sectional dimension of the projections being 5 mm or less is a results effective variable with the results being a change in the composition and size of the projection itself. It would have been obvious to one having ordinary skill in the art at the time the invention was made to make the cross sectional dimension of 5 mm or less to allow the shoe the proper amount of space to fit the desired amount of projections on the base surface, and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lyden and Healy as applied to claim 1 above, in view of a second embodiment of Lyden.
Regarding Claim 23, the modified sole structure of Lyden discloses the sole structure according to claim 1, but does not expressly disclose wherein the sole structure further comprises a second projection field spaced apart from the projection field.
In a second embodiment of Lyden (Fig. 4), Lyden teaches a shoe with a sole structure (Fig. 4 #20.3) further comprises a second projection field spaced apart from the projection field (Fig. 4 shows four separate projection fields).
Both Lyden (as modified by Healy) and the second embodiment of Lyden teach analogous inventions in the art of footwear with projection elements. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Lyden (as modified by Healy) with the teachings of the second embodiment of Lyden such that the sole structure would further comprise a second projection field spaced apart from the projection field in order to increase flexibility of the sole along areas of projection field separation and to increase traction in areas with more projections.
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Response to Arguments
Applicant’s arguments, filed 02 June 2026, with respect to the 35 USC 103 of claims 1-2, 4-5, 7-9, 11-15, and 18-21 have been considered but are not persuasive.
Regarding the 35 USC 103 of claims 1 and 20, Applicant argues:
The newly added limitation “the projection field is configured in the sole structure to transmit force incident on the plurality of projections from a ball through the projection field and to a wearer's foot” overcomes the prior art of record. (Remarks Pg. 8-9)
The Examiner respectfully disagrees. The modified sole structure of Lyden discloses the structures as claimed and since no additional structures were added to the claim, it would be within the normal operation of those structures to perform the functional limitation as claimed. See 35 USC 103 rejection above.
Regarding the 35 USC 103 of claim 4, Applicant argues:
Dassler does not teach the nubs having a height of 8mm. (Remarks Pg. 8)
The Examiner respectfully disagrees. Col. 3:30-35 notes the nubs of Dassler are “7-8mm” making them at least 8mm. Further, the length of the nubs is a result effective variable, which is well within the knowledge of one having ordinary skill in the art to determine. See MPEP 2144.05 and the 35 USC 103 rejection above.
Applicant submits that the dependent claims are patentable based on their dependencies from claims 1 and 20; however, as discussed in the rejection below and in the arguments above, claims 1 and 20 are not allowable over the prior art. Therefore, these arguments have not been found convincing and the rejections of the independent claims under 35 U.S.C. 102 and/or 103 have been maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAQUEL M. WEIS whose telephone number is 571-272-6804. The examiner can normally be reached Mon-Fri: 0800-1700.
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/RAQUEL M. WEIS/Examiner, Art Unit 3732
/HEATHER MANGINE, Ph.D./Primary Examiner, Art Unit 3732
Prosecution Insights