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 .
Election/Restrictions
Applicant's election without traverse of Group I, claims 1-14 in the reply filed on March 4, 2026 is acknowledged. The claims that would have been withdrawn have been canceled.
Response to Amendment
Claims 1-14 are pending. Claims 15-16 have been canceled. Claims 1-4, 6-11, and 13 have been amended.
Claim Rejections - 35 USC § 112
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.
Claims 2, 5, 12, and 14 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 2 recites the broad recitation thickness from .01 mm to 5 mm, and the claim also recites preferably from 0.01 mm to 0.2 mm, preferably from 0.05 mm to 0.15 mm which is the narrower statement of the range/limitation.
Additionally, claim 5 recites the broad recitation a filament crossing density of at least 200 crossings per cm2, and the claim also recites in particular at least 300 crossings per cm2, more particularly at least 500 crossings per cm2 which is the narrower statement of the range/limitation.
Additionally, claim 12 recites the broad recitation each of the sections is formed from less than 100 strands, and the claim also recites preferably less than 30, more preferably less than 10, more preferably less than 5 continuous strands, more preferably from one continuous strand, which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 14 contains the trademark/trade name PEBAX®. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a polymer composition and, accordingly, the identification/description is indefinite. With reference to [0030], it would be clearer if the claim recited a polyether block amide or the specific polyether block amide sold under the name PEBAX®.
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) 1, 3-4, 6-8, 10-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Davis (US 2015/0040428).
Regarding claim 1, Davis discloses a method of manufacturing a sole unit having a midsole and an outsole being connected to the midsole (sole 100 made by extrusion with multiple layers, [0064] [0098] Figs. 1, 22; outsole 232, midsole 234, [0087], Fig. 16), the method comprising: a. providing a midsole having a first surface configured to face an upper (layer with a surface facing the upper, [0064] Fig. 4), an opposite second surface and a peripheral edge surface (surface facing other layers/toward the outsold, [0064], Fig. 4); b. melting a polymer composition at a first temperature to provide a molten polymer composition (melting is part of extruding, [0014] [0100]); and c. applying the molten polymer composition on the second surface of the midsole in the form of a filament forming a plurality of loops on the second surface, thereby forming an outsole (extruding loops to form the layers, [0064] [0069] [0098], Figs. 1-9, 22).
Regarding claim 3, Davis discloses wherein the molten polymer composition is applied on the second surface in the form of a filament forming a plurality of partially superimposed loops extending along a filament path (extruding loops to form the layers, [0064] [0069] [0098], Figs. 1-9, 22).
Regarding claim 4, Davis discloses wherein the plurality of partially superimposed loops define a plurality of crossings at which the filament crosses itself and forms a material-bonded, fused connection with itself (loops of successive layers cross filament from previous layers, Figs. 1-6, 9).
Regarding claim 6, Davis discloses wherein the plurality of superimposed loops are stacked on top of each other along the filament path (Figs. 10-11, 14-16).
Regarding claim 7, Davis discloses wherein the filament is applied such that it forms a plurality of fused bulge portions, formed from multiple fused together filament sections of the filament (ends of loops bonded to adjacent loops, Fig. 9).
Regarding claim 8, Davis discloses the step of applying or embossing a traction pattern to the outsole (higher density to form outsole, [0058]; bottom surface of outsole 232 constitutes a traction pattern, [0088], Fig. 17).
Regarding claim 10, Davis discloses wherein in step c., the molten polymer composition is additionally applied on the peripheral edge surface of the midsole (as shown in Fig. 21, filament applied along edge).
Regarding claim 11, Davis discloses wherein the molten polymer composition is applied to at least one of the following sections of the midsole (2): a. a heel section of the second surface to provide a heel outsole section; b. a midfoot section of the second surface to provide a midfoot outsole section; c. a forefoot section of the second surface to provide a forefoot outsole section; d. a medial section of the peripheral edge surface to provide a medial out-sole section; e. a lateral section of the peripheral edge surface to provide a lateral out-sole section; f. a heel section of the peripheral edge surface to provide a heel outsole section; and g. a forefoot section of the peripheral edge surface to provide a forefoot outsole section (all sections, see Figs. 14-17, 21).
Regarding claim 12, Davis discloses wherein each of the sections is formed from less than 100, preferably less than 30, more preferably less than 10, more preferably less than 5 continuous strands, more preferably from one continuous strand ([0012]).
Regarding claim 13, Davis discloses wherein the midsole provided in step a) is connected to an upper (extruded directly onto an upper, [0017]), wherein the first surface of the midsole faces the upper (extruded directly onto an upper, [0017]).
Regarding claim 14, Davis discloses wherein the polymer composition comprises at least one of TPU, polyamide, TPE, and PEBAX® ([0012]).
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) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Davis (US 2015/0040428).
Regarding claim 2, Davis teaches wherein the filament has a filament thickness from 0.01 mm to 5 mm, preferably from 0.01 mm to 0.2 mm, preferably from 0.05 mm to 0.15 mm (thickness may vary, thus teaching at least an overlapping range, [0011] [0059]; see MPEP 2144.05(I)).
Claim(s) 5 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Davis (US 2015/0040428) as applied to claims 4 and 1 above, respectively, and further in view of Voelchert (CH 717906; with citations based on US 2024/0049837).
Regarding claim 5, Davis teaches a method substantially as claimed. Davis does not teach a filament crossing density and none of the figures appear to have the density shown in Applicant’s Figs. 1-2.
However, in the same field of endeavor of using FDM to lay filament for a shoe component (abstract), Voelchert teaches wherein the molten polymer composition is applied on the second surface at a filament crossing density of at least 200 crossings per cm2, in particular at least 300 crossings per cm2, more particularly at least 500 crossings per cm2 (helically bonded coils demonstrate a dense pattern, [0056], Fig. 2; while no specific numbers are presented, Fig. 2 of Voelchert presents at least an overlapping range, see MPEP 2144.05(I)).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Davis to include coils as taught by Voelchert because [0011] of Voelchert teaches that tuning coil density can tune elasticity and stability.
Regarding claim 9, Davis discloses wherein step c) further comprises pre-conditioning an area of the second surface of the midsole before applying the molten polymer composition to that area (heating surface 502 to which the filament is applied to, [0098]).
Davis teaches a method substantially as claimed. Davis does not disclose wherein the pre-conditioning comprises at least one of irradiating the area with plasma and heating the area with a hot air stream.
However, in the same field of endeavor of using FDM to lay filament for a shoe component (abstract), and heating the surface that the filament is extruded onto ([0020-21]), Voelchert teaches wherein the pre-conditioning comprises heating the area with a hot air stream (hot air is delivered around the filament and thereby also heating the last/surface the filament is applied to, [0027] [0031]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Davis to include applying hot air to the surface because [0027] [0031] of Voelchert teaches that doing so helps to shape the filament as desired.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Davis (US 10,945,488) teaches subject matter similar to Davis (US 2015/0040428), cited above. Voelchert (US 12,342,903) teaches subject matter similar to Voelchert (CH 717906; US 2024/0049837), cited above. Solving the same problem of preconditioning a shaping layer with heat in a FDM process, [0043] of Anegawa (US 2022/032536; US 12,162,210; see also US 2021/0402687; US 11,833,717) teaches heating by irradiating with plasma. Similar teachings are in Denda (US 2015/0273766; US 9,802,363).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS J CHIDIAC whose telephone number is (571)272-6131. The examiner can normally be reached 8:30 AM - 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sam Xiao Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS J CHIDIAC/Examiner, Art Unit 1744
/XIAO S ZHAO/Supervisory Patent Examiner, Art Unit 1744