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 .
Election/Restrictions
Applicant’s election of Group I (claims 16-23) in the reply filed on 08/27/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 22 and 23 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.
Claims 22 and 23 recite the limitation “the lower sole section”. However, there is insufficient antecedent basis for this limitation in the claim and it is unclear whether “the lower sole section” refers to the sole region, the lower adhesion-promoting layer, or a different structure. For the purpose of examination, Examiner will interpret “the lower sole section” as the sole region. However, clarification and correction is required.
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) 16 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schilke et al. (US4123493A).
Regarding claim 16, Schilke teaches a method for the production of a substructure for footwear (col 4 line 1-2), comprising:
producing an inner half-shell comprising an intermediate layer (first sole portion 35; Figure 4) forming a foot support and a lower, adhesion-promoting layer (filler 16; Figure 4 and Figure 12) by:
heating a mass as a starting material for forming the intermediate layer (col 4 line 19-23);
without prior demolding of the mass from a mold part, introducing a press plunger (dummy last 11; Figure 4) into the mold to press the mass with the lower, adhesion-promoting layer (col 4 line 11- 23 and line 56-61), wherein the heated mass is positioned under the lower, adhesion-promoting layer to form the inner half-shell (see mass forming first sole portion 35 under filler 16 in Figure 4);
removing the press plunger from the mold (Figure 5) and then placing a mold cavity sealingly on the mold part in such a way that a cavity in a form of a sole region remains between the lower, adhesion-promoting layer and the mold cavity (see Figure 6); and
cooling the inner half-shell (col 4 line 19-23);
without prior demolding of the half-shell from the mold part, forming the substructure by foaming or injection molding a plastic material into the cavity in the form of the sole region (col 4 line 29-43) to form the inner half-shell (second sole portion 45; Figure 6) on a side of the lower, adhesion-promoting layer (see second sole portion 45 on a side of filler 16 in Figure 12); and
then moving the mold part and the mold cavity apart and demolding the substructure (col 4 line 43-49).
Regarding claim 20, Schilke teaches the method of claim 16, wherein the inner half-shell is shaped during the pressing in such a way that its side facing away from the lower, adhesion-promoting layer comprises the shape of a footbed (second sole portion 45 facing away from the lower, adhesion-promoting layer attaches to insole 17 such that the second sole portion 45 has the shape of a footbed; see Figure 6 and Figure 7).
Claim(s) 16, 19, 20, and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Varotto (IT201800004945A1- Machine translation provided herein).
Regarding claim 16, Varotto teaches a method for the production of a substructure for footwear ([0004]), comprising:
producing an inner half-shell comprising an intermediate layer (lower tread layer 32a; Figure 22) forming a foot support ([0085]-[0086]) and a lower, adhesion-promoting layer (intermediate layer 32b; Figure 24) by:
heating a mass as a starting material for forming the intermediate layer ([0067] Fig. 6 shows the creation of the lower layer (30a), i.e. the tread, which occurs by injection/casting and subsequent compression of the thermoplastic polymer inside a lower cavity (40a) between the lower half-mold (3) and the first upper half-mold (5), [0089] Phases 1, 2, (Figs. 22, 23) – They are substantially the same as phases 1 and 2 of the previous cases; heating is required for the thermoplastic material to be injected and compressed inside the lower cavity);
without prior demolding of the mass from a mold part, introducing a press plunger (last 11; Figure 24) into the mold to press the mass with the lower, adhesion-promoting layer (see last 11 moving upward after pressing into layers 32a and 32b in Figure 24),
wherein the heated mass is positioned under the lower, adhesion-promoting layer to form the inner half-shell (see lower layer 32a under intermediate layer 32b in Figure 7);
removing the press plunger from the mold (see last 11 moving upward in Figure 24) and then placing a mold cavity sealingly on the mold part in such a way that a cavity in a form of a sole region remains between the lower, adhesion-promoting layer and the mold cavity ([0091] At the same time, the last (11), with the upper (11a) fitted, descends, approaching the lower
half-mold (3), and the first two half-rings (12a, 12b) close, delimiting an upper cavity (41c) into which the upper layer (32c) of the sole (32) will be injected/poured); and
cooling the inner half-shell ([0077]; as the second upper half-mold 6 is replaced by the last 11 and no injection of heated polymer occurs then the inner half-shell will cool);
without prior demolding of the half-shell from the mold part, forming the substructure by foaming or injection molding a plastic material into the cavity in the form of the sole region to form the inner half-shell (upper layer 32c; Figure 27) on a side of the lower, adhesion-promoting layer ([0092]-[0093]); and
then moving the mold part and the mold cavity apart and demolding the substructure ([0093] The film (32b) is trimmed together with the regulated burr of material which, through
compression, acts as a vehicle for the venting of the air and which is provided with a light on
the head of the second half-rings (19a, 19b) with respect to their seat on the first half-rings
(12a, 12b)).
Regarding claim 19, Varotto teaches the method of claim 16, wherein the lower, adhesion-promoting layer is trimmed after the demolding of the substructure ([0093] The film (32b) is trimmed together with the regulated burr of material which, through
compression, acts as a vehicle for the venting of the air and which is provided with a light on
the head of the second half-rings (19a, 19b) with respect to their seat on the first half-rings
(12a, 12b)).
Regarding claim 20, Varotto teaches the method of claim 16, wherein the inner half-shell is shaped during the pressing in such a way that its side facing away from the lower, adhesion-promoting layer comprises the shape of a footbed ([0091] At the same time, the last (11), with the upper (11a) fitted, descends, approaching the lower half-mold (3), and the first two half-rings (12a, 12b) close, delimiting an upper cavity (41c) into which the upper layer (32c) of the sole (32) will be injected/poured; last 11 comprises the shape of a footbed).
Regarding claim 23, Varotto teaches the method of claim 16, wherein the intermediate layer and the sole section are bonded to one another exclusively via the lower, adhesion-promoting layer and an interlocking of the intermediate layer, the lower, adhesion-promoting layer, and the lower sole section (see Figure 27) without the use of a chemical adhesion promoter (Varotto teaches the layers are bonded to one another through compression between the layers and does not teach the presence of an adhesive or chemical adhesion promoter between the layers)
Claim(s) 16, 20, and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chamblin (US20190365027).
Regarding claim 16, Chamblin teaches a method for the production of a substructure for footwear ([0004]), comprising:
producing an inner half-shell comprising an intermediate layer (outsole 138; Figure 7) forming a foot support and a lower, adhesion-promoting layer (insert 142; Figure 7) by:
heating a mass as a starting material for forming the intermediate layer ([0076] At a block 1704, a first polymeric composition is injected into the mold cavity. The first polymeric composition may be any composition in any state, such as a to-be-cured polymeric composition, a polymeric composition above a glass transition temperature, a polymeric composition that is activate for forming bonding by subsequent processing (e.g., heat treatment, pressure treatment));
without prior demolding of the mass from a mold part, introducing a press plunger (top platen 204; Figure 6 and Figure 7) into the mold to press the mass with the lower, adhesion-promoting layer, wherein the heated mass is positioned under the lower, adhesion-promoting layer to form the inner half-shell ([0058] FIG. 6 depicts the mold 200 with the top platen 204 positioning the insert 142 in the mold cavity to be received by the injected polymeric composition 230 forming the outsole 13… [0062] The positioning of the polymeric composition 230 in contact with the insert 142 occurs while the polymeric composition 230 is capable of forming a bond with the insert 142 to couple the polymeric composition 230 with the insert 142; see top platen 204 pressing insert 142 and foam composition 230 forming outsole 138 in Figure 7);
removing the press plunger from the mold ([0065] FIG. 8 depicts the top platen 204 being removed from the mold 200 after depositing the insert 142 to be coupled with the outsole 138, in accordance with aspects hereof and Figure 8) and then placing a mold cavity sealingly on the mold part (Figure 9) in such a way that a cavity in a form of a sole region remains between the lower, adhesion-promoting layer and the mold cavity; and
cooling the inner half-shell (see Figure 8 where no molten polymer composition requiring heating is present such that the inner half-shell is cooled);
without prior demolding of the half-shell from the mold part, forming the substructure by foaming or injection molding a plastic material into the cavity in the form of the sole region to form the inner half-shell on a side of the lower, adhesion-promoting layer (Figure 9 and Figure 10; [0066]-[0067]); and
then moving the mold part and the mold cavity apart and demolding the substructure ([0070] Following the prescribed curing time, the article may be removed from the mold 200 as a formed article of footwear having a direct attached sole with a visible insert formed in the sole).
Regarding claim 20, Chamblin teaches the method of claim 16, wherein the inner half-shell is shaped during the pressing in such a way that its side facing away from the lower, adhesion-promoting layer comprises the shape of a footbed ([0066] Having the polymeric foam composition 130 inserted into the mold at a position between the insert 142 and the plantar region 114 of the upper 102 allows for the polymeric foam composition to be positioned between the outsole 138 and the upper 102 to serve as a direct attach material for the shoe; see foam composition 130 is pressed onto upper 102 forming shape of a footbed).
Regarding claim 22, Chamblin teaches the method of claim 16, wherein the sole region is produced from polyurethane ([0034] The polymeric foam composition 130 may be any polymeric composition. Foam is a cellular structure with either open celled or closed cell structures of polymeric composition and voids, such as gas voids. In an example, the polymeric foam composition is a polyurethane (“PU”) composition).
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) 17 is rejected under 35 U.S.C. 103 as being unpatentable over Varotto (IT201800004945A1- Machine translation provided herein), and further in view of Stortini (WO2016128818A1).
Regarding claim 17, Varotto teaches the method of claim 16. Further, Varotto teaches the lower, adhesion-promoting layer is a plastic sheet ([0094] In summary, the plastic sheet (32b) is placed between the lower layer (32a) and the upper layer (32c), then it is folded upwards for a few millimetres, to simulate a greater thickness of the intermediate layer), but fails to teach wherein a layer of a fibrous material is used as the lower, adhesion-promoting layer, wherein the layer of the fibrous material is a woven or knitted fabric of individual threads or fibers.
In the same field of endeavor pertaining to a method for the production of a substructure for footwear, Stortini teaches a plastic film with a function of binding a lower and upper layer may alternatively be a sheet consisting of natural material, including fabric (“According to another variant of the invention, said junction element 12 may consist of sheets of natural material suitably pre-treated externally to perform the same "binding" function of the plastic films 12 previously described. More in detail, said sheets 12 may consist of sheets of leather, cork, cardboard, fabric or similar materials coated with adhesive substances and binders such as mastics or adhesives so as to adhere in a secure and lasting manner to the layers 10, 11 of the sole 1 which connects”- see pg. 8 and sheet 12 in Figure 5C).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to substitute the plastic film of Varotto with the film of Stortini such that a layer of a fibrous material is used as the lower, adhesion-promoting layer, wherein the layer of the fibrous material is a woven or knitted fabric of individual threads or fibers, to achieve the predictable result of forming a substructure that adheres the intermediate layer to the inner half-shell through the lower, adhesion-promoting layer. There would have been a reasonable expectation of success, since Varotto teaches the film is a polyurethane sheet ([0090] With the second half-rings (19a, 19b) tightened on the lower half-mold (3), a film (32b) of plastic material (for example thermoplastic polyurethane) is deposited on the first lower layer (32a) which will constitute said intermediate layer (32b)), and Stortini teaches fabric sheets as an alternative to plastic films made of polyurethane that perform the same “binding” function (see pg. 8 of Stortini).
Claim(s) 21 is rejected under 35 U.S.C. 103 as being unpatentable over Varotto (IT201800004945A1- Machine translation provided herein), and further in view of Shelton et al. (US20090249656A1).
Regarding claim 21, Varotto teaches the method of claim 16. However, Varotto teaches the mass used as the starting material for forming the intermediate layer is a thermoplastic polymer ([0009] First, the bottom layer, or tread, is formed by injecting or casting a thermoplastic polymer or elastomer into an open mold), and fails to teach the intermediate layer is a mixture of a natural material and a synthetic material.
In the same field of endeavor pertaining to a method for the production of a substructure for footwear, Shelton teaches wherein the mass used as the starting material for forming the intermediate layer is a mixture of a natural material and a synthetic material ([0033] The outsole 1 in FIGS. 3-6, in one embodiment, also includes an outer sole layer 10 that includes fibrous material 11 (FIG. 5) that is derived from naturally occurring fibrous material… The fibrous material containing layer 10 is applied to the base layer 9 after it is formed providing an outer ground engaging surface 12. The fibrous material 11 can be applied in bulk form to a binder material such as an applied adhesive 14 (FIGS. 3, 5)). A mixture of natural and synthetic material reduces the amount of synthetic material required to form an outsole, thus reducing the cost of producing an outsole while maintaining functionality and appearance ([0034] In the use of the above-described naturally occurring fibrous material 11, the addition of fibers reduces the amount of elastomer or other materials used to form an outsole, thus reducing the cost of producing an outsole while maintaining functionality and appearance).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the mass used as the starting material for forming the intermediate layer of Varotto to be a mixture of a natural material and a synthetic material, as taught by Shelton, for the benefit of reducing the cost of producing an outsole while maintaining functionality and appearance.
Allowable Subject Matter
Claim 18 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance:
The closest prior art is Schilke et al. (US4123493A), Varotto (IT201800004945A1- Machine translation provided herein), Chamblin (US20190365027), and Jang (KR20140028680A- Machine translation provided herein).
Regarding claim 18, Schilke, Varotto, and Chamblin teach the method of claim 16. However, the recited references fail to teach wherein, when pressing the heated mass with the lower, adhesion-promoting layer, a microfibre covering is applied to a side of the intermediate layer facing away from the lower, adhesion-promoting layer.
Jang teaches a microfibre covering (“First, the surface material 10 may be configured through a soft general fabric fabric or a microfiber fabric that is easy to absorb sweat in consideration of a wearer's contact with the shoe insole 1”- see pg.). However, the microfiber layer is applied to a top region that would correspond to the inner half-shell structure, and fails to teach the microfibre covering is applied to a side of the intermediate layer facing away from the lower, adhesion-promoting layer. Therefore, one of ordinary skill would not look to the teachings of Jang to apply a microfibre covering to a side of the intermediate layer facing away from the lower, adhesion-promoting layer.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARIELLA MACHNESS whose telephone number is (408)918-7587. The examiner can normally be reached Monday - Friday, 6:30-2:30 PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Galen Hauth can be reached at 571-270-5516. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ARIELLA MACHNESS/ Examiner, Art Unit 1743
