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 Amendments
The amendments filed with the written response received on 04 November 2025 have been considered and an action on the merits follows. As directed by the amendment, claim(s) 1, 8, 12, and 20 has/have been amended, claim(s) 17 is/are canceled, claim(s) 21 has/have been added, and claim(s) 3, 6, 10, and 16 has/have been withdrawn. Accordingly, claim(s) 1-16 and 18-21 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 18-21.
Because of the applicant's amendment, the following in the office action filed 04 August 2025, are hereby withdrawn:
Claim Objections
35 USC 112(b) Rejections
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, and 18-20 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).
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.
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).
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).
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.
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Response to Arguments
Applicant’s arguments, filed 04 November 2025, with respect to the 35 USC 103 rejection of claims 1-2, 4-5, 7-9, 11-15, and 18-20 have been considered but not persuasive.
Regarding the 35 USC 103 rejection of claims 1-2, 4-5, 7-9, 11-15, and 18-20, Applicant argues:
“Applicant asserts that the cited "motivation" for modifying the Lyden structure based on Healy fails to lead one of ordinary skill in the art to the suggested modification… Applicant's claim 1 recites that when the claimed sole structure is supported on its ground-facing surface on a horizontal support surface, a first subset of the plurality of projections have a longitudinal length sufficient such that the free ends of the plurality of projections of the first subset extend toward the horizontal support surface beyond a free end surface of a closest primary traction cleat of the plurality of primary traction cleats to a respective projection of the first subset… the Office asserts that one of ordinary skill in the art would have been motivated to modify the Lyden protrusions 29 based on the teachings of Healy "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,"' (citing Healy, col. 1, lines 45-48)… Nothing in Healy, however, describes that the cited "projections" from Annotated Healy Fig. 11 perform or assist in performing the function of adjusting to "uneven terrain in response to the normal loading of the shoe on rough or uneven surfaces." Notably, the Healy patent does not describe or attribute any clear function for the cited "projections" from Annotated Fig. 11. Healy mentions Fig. 11 two times: (a) once in the Brief Description of the Drawings (at Healy, col. 3, lns. 5-7), and (b) once at col. 5, lns. 34-37 ("On hard packed trails, lugs with sharp ridges may dig into the trail to provide a traction benefit. This embodiment is illustrated in FIGS. 10, 11 and 12."). Neither of these locations in Healy attributes any clear function or purpose to the "projections" identified by the Office in Healy Annotated Fig. 11. In fact, Healy does not even provide a reference number to identify these "projections." Thus, Healy fails to provide "motivation" to make the specific structural modifications to the Lyden structure necessary to arrive at the claimed structure. Further, the Office provides no reasoning to explain why making the asserted Lyden projections 29 “longer than the traction elements” would allow the Lyden shoe to adjust for “uneven terrain in response to the normal loading of the shoe on rough or uneven surfaces.” … Lyden’s strong and multiple teachings directly away from making protrusions 29 longer than traction members 25.” (Remarks Pg. 9-12).
The Examiner respectfully disagrees. Firstly, Healy recites in Col. 5:32-43, “A number of geometric shapes may be adapted for use with the lugs described herein that can provide improved gripping on different surfaces. On hard packed trails, lugs with sharp ridges may dig into the trail to provide a traction benefit. This embodiment is illustrated in FIGS. 10, 11 and 12,” which supports the statement, “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,” found in Healy Col. 1:45-48. Secondly, while Fig. 11 does not have reference numerals for the “projections” (which are noted as “lugs” in the description Col. 4:44-6:63), variations of the same lugs are clearly seen in Figs. 1A-1B #1, Figs. 2A-2B #10, Figs. 71-7B #70, Fig. 9 #90, and Fig. 10 #100, as well as being described in Col. 4:44-6:63. Lastly, Lyden notes that the height of the projections can vary depending upon the conditions the shoe will be used in. Though a shorter projection is preferred, Lyden Col. 10:17-20 notes, “traction members 25 can have a height other than approximately 6 mm, and the height of various traction members 25 included on a particular sole 20 can be varied” and does not note that the traction members must be shorter than the projections, only that this is a preferred embodiment. Lyden Col. 10: 35-37 goes on to state, “Generally, it is desired for the protrusions 29 to mechanically engage and exhibit a comb or brush like action with respect to a natural grass surface.” Therefore it would not be unreasonable to modify Lyden with Healy to have longer projections that beyond a free end surface of a closest primary traction cleat. See 35 USC 103 rejection above.
Applicant submits that the dependent claims are patentable based on their dependencies from claim(s) 1 and 20; however, as discussed in the rejection and in the arguments above, claim(s) 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
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 extension fee 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 date of this final action.
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