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 .
The amendment filed April 6, 2026 has been entered.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 9, 11-12, 15 and 21 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Kohatsu (US 2020/0338847).
Claim 1: Kohatsu discloses a method for producing an outsole of a shoe (abstract). The method includes providing and mixing a polymer with a solvent, thereby producing a liquefied polymer (¶¶ 37, 53), depositing the liquefied polymer onto a midsole of the shoe to form the outsole of the shoe (¶ 37), and curing the liquefied polymer (¶ 37).
Claim 3: Kohatsu discloses texturing the liquefied polymer prior to curing the liquefied polymer (¶ 79).
Claim 9: Kohatsu discloses the liquefied polymer is deposited onto a portion of the shoe (¶¶ 62-63).
Claim 11: Kohatsu discloses the liquefied polymer is deposited onto the midsole in a pattern (¶¶ 65, 76, 78).
Claim 12: Kohatsu discloses the pattern including a laminar pattern (¶¶ 37, 66; fig. 1).
Claim 15: Kohatsu discloses dipping (¶ 63).
Claim 21: Kohatsu discloses the midsole including a foam material (¶¶ 22, 26).
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.
Claims 4, 8 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kohatsu, as applied to claim 1 above, in view of Yakulis (US 2010/0076143).
Claim 4: Kohatsu is silent as to the shoe being a sports shoe. However, in the same field of endeavor, Yakulis discloses a sport and athletic shoe outsole being formed from a polyurea composition by spray application onto a midsole made of foam (¶¶ 8, 65). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to have utilized the outsole-forming method of Kohatsu on an athletic/sport shoe as taught by Yakulis, because Yakulis identifies athletic and sport shoes as the footwear that benefits from a polyurea outsole applied to a foam midsole, and Kohatsu’s foam-midsole sole structure is exactly that type. The combination applies a known method to a known article to yield the predictable result of a wear-resistant outsole.
Claim 8: Kohatsu deposits the outsole material on a midsole section (¶ 37).
Claim 13: Yakulis’s dry film thickness of 40-150 mils corresponds to approximately 1.0-3.8 mm (¶ 78).
Claim 14: Yakulis’s dry film ranges of 20-1000 mils and 0.1 to less than 15 mils overlap the claimed ranges. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (a prima facie case of obviousness exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art) and In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (same).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kohatsu in view of Yakulis (US 2010/0076143), as applied to claim 4 above, further in view of Kelly (US 2003/0188458).
Claim 6: Kohatsu is silent as to shoe being a football shoe. However, Kelly discloses studded football shoes and teaches that the studs provide traction and are integrally formed with the outsole (¶¶ 8-10). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to have utilized the method of modified Kohatsu on a football shoe as taught by Kelly to yield the predictable result of a wear-resistant, high-traction outsole.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kohatsu in view of Kelly (US 2003/0188458).
Claim 7: Kohatsu is silent as to shoe being a studded shoe. However, Kelly discloses studded football shoes and teaches that the studs provide traction and are integrally formed with the outsole (¶¶ 8-10). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to have utilized the method of Kohatsu on a studded shoe as taught by Kelly to yield the predictable result of a wear-resistant, high-traction outsole.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kohatsu, as applied to claim 9 above, in view of Schwartz (US 2007/0282562).
Claim 10: Kohatsu is silent as to determining portions using maps. However, Schwartz discloses using a pressure map to determine high stress regions and making corresponding modifications to the shoe (abstract). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to have used a pressure map in the method of Kohatsu to identify high-stress or high-wear regions of the shoe and adjust the amount of polymer deposited in those areas.
Claims 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Kohatsu, as applied to claim 1 above.
Kohatsu is silent as to the claimed viscosity. However, absent evidence of unexpected results obtained from the claimed viscosity, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to have selected a suitable viscosity to tailor the flexibility, weight and/or aesthetics of the component. Kohatsu expressly recognizes viscosity as the variable governing handling, flow and retention on the midsole (¶ 64). The optimization of a range or other variable within the claims that flows from the “normal desire of scientists or artisans to improve upon what is already generally known” is prima facie obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (determining where in a disclosed set of percentage ranges the optimum combination of percentages lies is prima facie obvious). The discovery of an optimum value of a variable in a known process is usually obvious. In re Aller, 220 F.2d 454, 456 (C.C.P.A. 1955). See also In re Boesch, 617 F.2d 272, 276 (C.C.P.A. 1980) (“[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.”). See also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“‘[I]t is not inventive to discover the optimum or workable ranges by routine experimentation.’” (quoting Aller, 220 F.2d at 456)); In re Kulling, 897 F.2d 1147, 1149 (Fed. Cir. 1990) (finding no clear error in Board of Patent Appeals and Interferences’ conclusion that the amount of eluent to be used in a washing sequence was a matter of routine optimization known in the pertinent prior art and therefore obvious).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Kohatsu, as applied to claim 1 above, in view of Perrault (US 2018/0271211).
Claim 16: Kohatsu is silent as to producing the midsole via 3D printing. However, Perrault discloses 3D printing a midsole to allow for spatially tuned cushioning in a cost-effective manner unobtainable by molding (¶¶ 86, 100). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to have 3D printed the midsole of Kohatsu in order to allow for spatially tuned cushioning in a cost-effective manner unobtainable by molding.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Kohatsu, as applied to claim 1 above, in view of Jones (US 2014/0020192).
Claim 20: Kohatsu is silent as to curing via radiation. However, Jones discloses printing a polymer in predefined patterns on shoe sole components in interconnected linear strips and loops for support (abstract; fig. 1), and curing each deposited layer with UV light 126 (¶ 77). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to have cured Kohatsu’s deposited liquefied polymer using radiation as taught by Jones because both references deposit a flowable polymeric material onto a footwear sole component and cure it in place, and UV curing is an art-recognized method for deposited sole materials that allows for rapid and controlled curing.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot in view of the new grounds of rejection.
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 LARRY THROWER whose telephone number is (571)270-5517. The examiner can normally be reached 9am-5pm MT M-F.
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/LARRY W THROWER/Primary Examiner, Art Unit 1754
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