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 .
Status of the Claims
This Office Action is in response to claims 1-10, filed October 7, 2024, which are pending in this application. An action on the merits follows.
Drawings
The drawings are objected to because in Fig. 3, the text “MP JOINT” should be removed from the drawing and replaced with a reference character. The text can be added to a corresponding portion of the written description of the specification if desired.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification – Disclosure
The disclosure is objected to because at [0019], “MP joint” should read “metatarsophalangeal (MP) joint” to properly introduce the abbreviated term if meant to refer to the term.
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because at line 3, “that allows a wearer” should read “configured to allow a wearer”.
Appropriate correction is required.
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.
Claims 1-10 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 1 recites the limitation “an inner functional portion formed on an inner side […] and an outer functional portion formed on an outer side of the inner functional portion” at lines 11-14. It is unclear how the outer function portion can be formed on an outer side of the inner functional portion. It is further unclear if the inner and outer functional portions are instead meant to be recited as being on the respective inner and outer sides of the forefoot portion. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. Based on Applicant’s disclosure, it is suggested that the limitation instead read “an inner functional portion formed on an inner side of the forefoot portion […] and an outer functional portion formed on an outer side of the forefoot portion”. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art.
Claim 1 further recites the limitation “a plurality of inner low rigidity portions arranged between the inner high rigidity portions adjacent to each other in the foot length direction” at lines 20-21. It is unclear if “each other” is referring to the plurality of inner low rigidity portions alone or both the plurality of inner low rigidity portions and the inner high rigidity portions. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. Based on Applicant’s disclosure, it is suggested that the limitation instead read “a plurality of inner low rigidity portions arranged between the inner high rigidity portions and adjacent to each other in the foot length direction”. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art.
Claim 1 further recites the limitation “a plurality of outer low rigidity portions arranged between the outer high rigidity portions adjacent to each other in the foot length direction” at lines 29-30. It is unclear if “each other” is referring to the plurality of outer low rigidity portions alone or both the plurality of outer low rigidity portions and the outer high rigidity portions. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. Based on Applicant’s disclosure, it is suggested that the limitation instead read “a plurality of outer low rigidity portions arranged between the outer high rigidity portions and adjacent to each other in the foot length direction”. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art.
Claim 6 recites the limitation “a rear reinforcing portion located more rearward in the foot length direction than an extension line of a MP joint of the foot of the wearer” at lines 8-9. The apparent abbreviated term “MP joint” is improperly introduced in the claim, and it is unclear to what term exactly the abbreviation is meant to refer. Furthermore, the position of the rear reinforcing portion is unclear, as it is recited with respect to an extension line of a joint of a wearer which can vary from wearer to wearer. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. Based on Applicant’s disclosure, it is suggested that the limitation instead read “a rear reinforcing portion configured to be located more rearward in the foot length direction than an extension line of a metatarsophalangeal (MP) joint of the foot of the wearer”. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art. See objection to Specification above and 101 rejection below for additional discussion.
Claim 6 further recites the limitation “a front reinforcing portion located more frontward in the foot length direction than the extension line of the MP joint of the foot of the wearer” at lines 10-11. The position of the front reinforcing portion is unclear, as it is recited with respect to an extension line of a joint of a wearer which can vary from wearer to wearer. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. Based on Applicant’s disclosure, it is suggested that the limitation instead read “a front reinforcing portion configured to be located more frontward in the foot length direction than the extension line of the MP joint of the foot of the wearer”. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art. See 101 rejection below for additional discussion.
Claim 6 further recites the limitation “a bend allowing portion located on the extension line of the MP joint of the foot of the wearer” at lines 12-13. The position of the bend allowing portion is unclear, as it is recited with respect to an extension line of a joint of a wearer which can vary from wearer to wearer. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. Based on Applicant’s disclosure, it is suggested that the limitation instead read “a bend allowing portion configured to be located on the extension line of the MP joint of the foot of the wearer”. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art. See 101 rejection below for additional discussion.
Claim 8 recites the limitation “an inner edge portion that overlaps with a rearfoot portion of the wearer” at lines 3-4. The position of the overlap of the inner edge portion is unclear, as it is recited with respect to a rearfoot portion of a wearer which can vary from wearer to wearer. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. Based on Applicant’s disclosure, it is suggested that the limitation instead read “an inner edge portion configured to overlap with a rearfoot portion of the wearer”. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art. See 101 rejection below for additional discussion.
Claim 8 further recites the limitation “an outer edge portion that overlaps with the rearfoot portion of the wearer” at lines 7-8. The position of the overlap of the outer edge portion is unclear, as it is recited with respect to a rearfoot portion of a wearer which can vary from wearer to wearer. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. Based on Applicant’s disclosure, it is suggested that the limitation instead read “an outer edge portion configured to overlap with the rearfoot portion of the wearer”. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art. See 101 rejection below for additional discussion.
Claims 2-10 are also rejected for being dependent on a rejected claim.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 6-10, as best can be understood, are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Claim 6 recites the limitation “a midsole that supports the foot of the wearer” at line 3. In order to overcome this rejection, it is suggested that the limitation instead read “a midsole configured to support the foot of the wearer”.
Claim 6 further recites the limitation “a rear reinforcing portion located more rearward in the foot length direction than an extension line of a MP joint of the foot of the wearer” at lines 8-9. In order to overcome this rejection, it is suggested that the limitation instead read “a rear reinforcing portion configured to be located more rearward in the foot length direction than an extension line of a metatarsophalangeal (MP) joint of the foot of the wearer”. See 112(b) rejection above for additional discussion.
Claim 6 further recites the limitation “a front reinforcing portion located more frontward in the foot length direction than the extension line of the MP joint of the foot of the wearer” at lines 10-11. In order to overcome this rejection, it is suggested that the limitation instead read “a front reinforcing portion configured to be located more frontward in the foot length direction than the extension line of the MP joint of the foot of the wearer”. See 112(b) rejection above for additional discussion.
Claim 6 further recites the limitation “a bend allowing portion located on the extension line of the MP joint of the foot of the wearer” at lines 12-13. In order to overcome this rejection, it is suggested that the limitation instead read “a bend allowing portion configured to be located on the extension line of the MP joint of the foot of the wearer”. See 112(b) rejection above for additional discussion.
Claim 8 recites the limitation “an inner edge portion that overlaps with a rearfoot portion of the wearer” at lines 3-4. In order to overcome this rejection, it is suggested that the limitation instead read “an inner edge portion configured to overlap with a rearfoot portion of the wearer”. See 112(b) rejection above for additional discussion.
Claim 8 further recites the limitation “an outer edge portion that overlaps with the rearfoot portion of the wearer” at lines 7-8. In order to overcome this rejection, it is suggested that the limitation instead read “an outer edge portion configured to overlap with the rearfoot portion of the wearer”. See 112(b) rejection above for additional discussion.
Claims 7-10 are also rejected for being dependent on a rejected claim.
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.
Claims 1-2, as best can be understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2013/0008053 to Nishiwaki et al. (hereinafter, “Nishiwaki”).
Regarding claim 1, Nishiwaki teaches a shoe comprising a sole and an upper (See Nishiwaki, Figs. 1-3B; shoe having sole (51, 52) and upper (U); abstract), wherein the upper includes: a topline portion that allows a wearer of the shoe to put a foot of the wearer in and out of the shoe (See Nishiwaki, Figs. 1-3B; portion of upper including first opening (101) which is capable of allowing entry of a hypothetical wearer’s foot therein; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)); a slit portion that defines an opening extending frontward in a foot length direction from the topline portion (See Nishiwaki, Figs. 1-3B; portion of upper including second opening (102) which extends frontward from first opening (101)); a peripheral edge portion connected to the sole (See Nishiwaki, Figs. 1-3B: portion of upper (U) connected to sole (51, 52)); and a forefoot portion covering portion that covers a forefoot portion of the wearer of the shoe (See Nishiwaki, Fig. 3A; main portion (10) of upper (U) capable of covering a forefoot portion of the wearer), the forefoot portion covering portion includes: an inner functional portion formed on an inner side in a foot width direction and between the slit portion and the peripheral edge portion; and an outer functional portion formed on an outer side of the inner functional portion in the foot width direction and between the slit portion and the peripheral edge portion (See Nishiwaki, Figs. 1-4C; forefoot main portion (10) includes inner and outer functional portions each having respective pluralities of reinforcement portions and flexible portions on respective inner, i.e., medial, and outer, i.e., lateral, sides of forefoot main portion (10) and positioned at least partially between second opening (102) and peripheral portion of upper (U)), the inner functional portion has: a plurality of inner high rigidity portions arranged so as to be aligned in the foot length direction, each of the plurality of inner high rigidity portions having a shape extending in the foot width direction (See Nishiwaki, Figs. 1-4C; medial reinforcement portions (32, 33) aligned in foot length direction and each having shape extending in foot width direction); and a plurality of inner low rigidity portions arranged between the inner high rigidity portions adjacent to each other in the foot length direction, each of the plurality of inner low rigidity portions having a bending rigidity lower than a bending rigidity of each of the plurality of inner high rigidity portions and having a shape extending in the foot width direction (See Nishiwaki, Figs. 1-4C; medial flexible portions (11, 12, 13) adjacent to one another and positioned between reinforcement portions (32, 33) in foot length direction and each having shape extending in foot width direction; flexible portions (11, 12, 13) are more flexible than reinforcement portions (32, 33) and therefore having lower bending rigidity; Examiner notes that the term "adjacent" is very broad and merely means "close to; lying near". (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)), the outer functional portion has: a plurality of outer high rigidity portions arranged so as to be aligned in the foot length direction, each of the plurality of outer high rigidity portions having a shape extending in the foot width direction (See Nishiwaki, Figs. 1-4C; lateral reinforcement portions (42, 43) aligned in foot length direction and each having shape extending in foot width direction); and a plurality of outer low rigidity portions arranged between the outer high rigidity portions adjacent to each other in the foot length direction, each of the plurality of outer low rigidity portions having a bending rigidity lower than a bending rigidity of each of the plurality of outer high rigidity portions and having a shape extending in the foot width direction (See Nishiwaki, Figs. 1-4C; lateral flexible portions (21, 22, 23) adjacent to one another and positioned between reinforcement portions (42, 43) in foot length direction and each having shape extending in foot width direction; flexible portions (21, 22, 23) are more flexible than reinforcement portions (42, 43) and therefore having lower bending rigidity), and a length between ends on an outer side in the foot width direction, of the outer low rigidity portions adjacent to each other in the foot length direction, is longer than a length between ends on the inner side in the foot width direction, of the inner low rigidity portions adjacent to each other in the foot length direction (See Nishiwaki, Fig. 3A; at least a length between ends of adjacent flexible portions (21, 22) on lateral side is longer than a length between ends of adjacent flexible portions (11, 12) on medial side).
Regarding claim 2, Nishiwaki (as discussed with respect to claim 1 above) further teaches a length between the outer low rigidity portions adjacent to each other in the foot length direction becomes gradually longer toward the outer side in the foot width direction (See Nishiwaki, Fig. 3A; length between adjacent flexible portions (21, 22, 23) on lateral side diverge away from one another toward the lateral side in the foot width direction thereby increasing a distance between flexible portions).
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.
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.
Claims 6-7, as best can be understood, are rejected under 35 U.S.C. 103 as being unpatentable over Nishiwaki, as applied to claim 1 above, and further in view of US 2015/0082668 to Nonogawa et al. (hereinafter, “Nonogawa”).
Regarding claim 6, Nishiwaki (as discussed with respect to claim 1 above) further teaches the sole includes: a midsole that supports the foot of the wearer (See Nishiwaki, Figs. 1-2; midsole (52) is capable of supporting a foot of a hypothetical wearer)); and an outer reinforcing portion provided on a side part of the midsole on the outer side in the foot width direction (See Nishiwaki, Fig. 2; side portion (52a) on lateral side of midsole (52)), and the outer reinforcing portion has: a rear reinforcing portion located more rearward in the foot length direction than an extension line of a MP joint of the foot of the wearer (See annotated Fig. 2 of Nishiwaki below; rear of side portion (52a) is capable of being located rearward of an extension line of a hypothetical MP joint of a hypothetical wearer); a front reinforcing portion located more frontward in the foot length direction than the extension line of the MP joint of the foot of the wearer (See annotated Fig. 2 of Nishiwaki below; front of side portion (52a) is capable of being located rearward of an extension line of a hypothetical MP joint of a hypothetical wearer); and a bend allowing portion located on the extension line of the MP joint of the foot of the wearer and coupling the rear reinforcing portion to the front reinforcing portion, the bend allowing portion allowing the front reinforcing portion to bend with respect to the rear reinforcing portion (See annotated Fig. 2 of Nishiwaki below; middle of side portion (52a) is capable of being located on an extension line of a hypothetical MP joint of a hypothetical wearer; middle of side portion (52a) is capable of allowing front portion to bend with respect to rear portion to at least some extent).
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Annotated Fig. 2 of Nishiwaki
That said, Nishiwaki is silent to the outer reinforcing portion being made of a material having a hardness higher than a hardness of a material of the midsole.
However, Nonogawa, in a related shoe art, is directed to a shoe sole having a midsole with portions formed of different hardness materials (See Nonogawa, Fig. 1; abstract). More specifically, Nonogawa teaches the outer reinforcing portion being made of a material having a hardness higher than a hardness of a material of the midsole (See Nonogawa, Fig. 1; lateral side portion (42) is formed of a material having a first hardness which is greater than the hardness of the midsole (41); [0089]).
It would have been obvious for one of ordinary skill in the art at the time of the effective filing date of the invention to form the lateral side portion of the midsole of Nishiwaki from a material that is harder than the rest of the midsole as disclosed by Nonogawa in order to provide support to the lateral side of a wearer’s foot (See Nonogawa, [0036]-[0037, [0044], [0089]).
Regarding claim 7, the modified shoe of Nishiwaki (i.e., Nishiwaki in view of Nonogawa, as discussed with respect to claims 1 and 6 above) further teaches wherein the sole further includes an outsole arranged on a lower surface side of the midsole (See Nishiwaki, Figs. 1-2; outsole (51) on lower surface of midsole (52)).
Claim 9, as best can be understood, is rejected under 35 U.S.C. 103 as being unpatentable over Nishiwaki in view of Nonogawa, as applied to claims 1 and 6-7 above, and further in view of US 2005/0076536 to Hatfield et al. (hereinafter, “Hatfield”).
Regarding claim 9, the modified shoe of Nishiwaki (i.e., Nishiwaki in view of Nonogawa, as discussed with respect to claims 1 and 6-7 above) further teaches the outsole includes a front ground contact portion overlapping with the forefoot portion covering portion in a thickness direction of the shoe (See Nishiwaki, Figs. 1-2; front portion of bottom of outsole (51) which is capable of contacting the ground and overlaps at least partially with forefoot main portion (10)).
That said, the modified shoe of Nishiwaki is silent to a plurality of bend guiding grooves arranged so as to be aligned in the foot length direction are formed in the front ground contact portion, each of the plurality of bend guiding grooves having a shape extending continuously or intermittently from an inner edge portion to an outer edge portion in the foot width direction, and a length between ends on the outer side in the foot width direction, of the bend guiding grooves adjacent to each other in the foot length direction, is longer than a length between ends on the inner side in the foot width direction, of the bend guiding grooves adjacent to each other in the foot length direction.
However, Hatfield, in a related shoe art, is directed to an article of footwear having an articulated sole structure (See Hatfield, Figs. 1 and 8; abstract). More specifically, Hatfield teaches a plurality of bend guiding grooves arranged so as to be aligned in the foot length direction are formed in the front ground contact portion, each of the plurality of bend guiding grooves having a shape extending continuously or intermittently from an inner edge portion to an outer edge portion in the foot width direction (See Hatfield, Figs. 7-8; sipes (52e, 52f, 52g) in front ground contact portion, aligned in foot length direction, and having shape extending continuously from medial to lateral edge portions in width direction), and a length between ends on the outer side in the foot width direction, of the bend guiding grooves adjacent to each other in the foot length direction, is longer than a length between ends on the inner side in the foot width direction, of the bend guiding grooves adjacent to each other in the foot length direction (See Hatfield, Figs. 7-8; length between ends of adjacent sipes (52e, 52f, 52g) is longer on lateral side than on medial side).
It would have been obvious for one of ordinary skill in the art at the time of the effective filing date of the invention to include the forefoot siped sole structure disclosed by Hatfield in the modified shoe of Nishiwaki for a variety of reasons including for example, but not limited to, increasing the flexibility of the sole structure through at least the forefoot portion of the shoe (See Hatfield, [0067]).
Allowable Subject Matter
Claims 3-5, 8, and 10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is an Examiner’s statement of reasons for indicating allowable subject matter: although Nishiwaki teaches the shoe structure having inner and outer functional portions as claimed, Nishiwaki is silent to the specific length requirements between the inner and outer side low rigidity portions as required by claim 3 as well as a plurality of inner high rigidity elements and a plurality of outer high rigidity elements being coupled to each other in the foot width direction as required by claim 4. Instead, Nishiwaki only discloses elongated, single high rigidity elements extending in the foot width direction. Furthermore, although Nonogawa teaches an outsole having grooves on a ground contacting portion, Nonogawa is silent to a separation groove having a front end at a position overlapping with a bend allowing portion as required by claim 8. Additionally, Nishiwaki and Nonogawa are silent as to the relationship between the high rigidity portions and the sole grooves as required by claim 10. Modification of Nishiwaki, Nonogawa, and/or Hatfield to meet such limitations would constitute hindsight reconstruction based on Applicant’s disclosure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure. US 2017/0215523 to Nishiwaki et al.; USPN 6,108,943; US 2014/0173934 to Bell; and US 2017/0143075 to Nonogawa et al. are each directed to article of footwear having uppers with varying rigidity and/or material constructions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R MARCHEWKA whose telephone number is (571) 272-4038. The examiner can normally be reached M-F: 9:00AM-5:00PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CLINTON T OSTRUP can be reached at (571) 272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW R MARCHEWKA/Examiner, Art Unit 3732