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 with traverse of Species B (Figs. 2 and 7-8) in reply to the Restriction/Election Requirement Filed on 10 November 2025 is acknowledged. The traversal is on the grounds that the search of all of the Applicant’s embodiments would prove no undue burden on the Examiner since elected Species B contains all of the structures of non-elected Species A, the Election of Species Requirement should be overcome and withdrawn.
The Examiner agrees and withdraws the Restriction/Election requirement of 09 September 2025. Accordingly, claims 1-20 are pending in this application, with an action on the merits to follow.
Claim Objections
Claim(s) 1, 9-12, 14, 16, and 18-19 is/are objected to because of the following informalities:
Claim 1, lines 3-4 should recite, “a forefoot area, a heel area, and a midfoot area, wherein the midfoot area is arranged between the forefoot area and the heel area”.
Claim 9, lines 3-4 should recite, “wherein the midsole defines a plurality of recessed pockets which are open towards the top layer and wherein at least [[a]] some of the recessed pockets are in the longitudinal direction of the midsole and are arranged one after another”.
Claim 10, line 2 should recite, “wherein the plurality of recessed pockets are arranged at least in the forefoot area”.
Claims 11 & 12 objected to under 37 CFR 1.75(c) as being in improper form because each claim depends from a claim that does not precede it. A series of singular dependent claims is permissible in which a dependent claim refers to a preceding claim which, in turn, refers to another preceding claim. A claim which depends from a dependent claim should not be separated by any claim which does not also depend from said dependent claim. It should be kept in mind that a dependent claim may refer to any preceding independent claim. In general, applicant's sequence will not be changed. See MPEP § 608.01(j) and 608.01(n). In the immediate case:
Claim 11 depends from claim 19, which is improper as claim 19 follows claim 11 and thus claim 11 should not depend from claim 19.
Claim 12 depends from claim 20, which is improper as claim 20 follows claim 12 and thus claim 12 should not depend from claim 20.
Claim 14, line 4 should recite, “of the upper, and wherein the support mechanism”.
Claim 16, line 2 should recite, “horizontal tilting slits each [[a]]have a depth”.
Claim 18, line 2 should recite, “wherein the plurality of recessed pockets are arranged in the forefoot area”.
Claim 19, line 2 should recite, “extending in the longitudinal direction of the midsole through the midfoot area”.
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.
Claim(s) 2-3, 6-8, 12-14, 17, and 20 (and claim 15 at least for depending from a rejected claim) is/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 2 is/are indefinite as it/they recite(s) “wherein the midsole comprises a medial sided horizontal tilting slit and/or a lateral sided horizontal tilting slit”. It is unclear if these are the same medial side horizontal tilting slits and/or lateral side horizontal tilting slits as the “one or more horizontal tilting slits being arranged on a medial side and/or on a lateral side of the midsole” of claim 1 (from which claim 2 depends) or if these are new/different structures. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as, “wherein the midsole comprises a medial sided horizontal tilting slit and/or a lateral sided horizontal tilting slit” as being the same structure as claim 1.
Claim 3 is/are indefinite as it/they recite(s) “wherein the one or more horizontal tilting slits are arranged in the midfoot area of the midsole or only in the midfoot area of the midsole”. It is unclear if the one or more horizontal slits are in other places and the midfoot area or if the one or more horizontal slits are just in the midfoot area alone. It is unclear how one dependent claim can claim both the fact that they one or more horizontal slits are in only the midfoot area of the midsole and also in other parts of the midsole. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as, “wherein the one or more horizontal tilting slits are arranged in the midfoot area of the midsole or only in the midfoot area of the midsole” as meaning the one or more horizontal tilting slits are at least in the midfoot area.
Claim 6 is/are indefinite as it/they recite(s) “wherein the midsole comprises one or more tiltable blocks, wherein each tiltable block is partially defined by a horizontal tilting slit”. It is unclear if “each tiltable block” is part of the previously recited “one or more tiltable blocks”. Further, it is unclear if the “a horizontal tilting slit” is the same or different than the previously recited “one or more horizontal tilting slits”. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as, “wherein the midsole comprises one or more tiltable blocks, wherein each tiltable block of the one or more tiltable blocks is partially defined by a horizontal tilting slit of the one or more horizontal tilting slits”.
Claim 7 is/are indefinite as it/they recite(s) “wherein each tiltable block is further defined by one or more sideward slits, wherein each sideward slit extends from the horizontal tilting slit to the top layer of the midsole”. It is unclear if “each tiltable block” is part of the previously recited “one or more tiltable blocks”. Further, it is unclear if the “each sideward slit” is part of the previously recited, “one or more sideward slits”. Further, it is unclear if the “horizontal tilting slit” is the same or different than the previously recited “one or more horizontal tilting slits”. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as, “wherein each tiltable block of the one or more tiltable blocks is further defined by one or more sideward slits, wherein each sideward slit of the one or more sideward slits extends from the horizontal tilting slit of the one or more horizontal tilting slits to the top layer of the midsole”.
Claim 8 is/are indefinite as it/they recite(s) “wherein at least some of the tiltable blocks have in the cross section along the longitudinal direction and perpendicular to the transverse direction a trapezoid shape or a shape of a rectangle or a parallelogram”. It is unclear if “at least some of the tiltable blocks” is part of the previously recited “one or more tiltable blocks”. Further, it is unclear if “the longitudinal direction” is referencing the midsole or the tiltable blocks. Further, it is unclear what “perpendicular to the transverse direction a trapezoid shape or a shape of a rectangle or a parallelogram” means, and the Specification does not provide additional clarification. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as, “wherein at least some of the tiltable blocks of the one or more tiltable blocks have in the cross section along the longitudinal direction of the midsole, and the at least some of the tiltable blocks have a cross section perpendicular to the transverse direction in a trapezoid shape, or a shape of a rectangle, or a parallelogram”.
Claim 12 is/are indefinite as it/they recite(s) “wherein the elastic plate comprises a plurality of protrusions which are inserted into the recessed pockets of the midsole”. There is a lack of antecedence in the claim for “the recessed pockets of the midsole” as there is no “a plurality of recessed pockets of the midsole” previously recited in claims 1 nor 20, both of which claim 12 depends. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as, “wherein the elastic plate comprises a plurality of protrusions which are inserted into a plurality of recessed pockets of the midsole”.
Claim 13 is/are indefinite as it/they recite(s) “a shoe comprising a midsole according to claim 1”. It is unclear if this “a shoe” is the same or a new/different structure than the previously recited “sport shoe” of claim 1. It is further unclear if the limitation “for a sport shoe” was a recitation of intended use and the shoe is now required for the claim. Further, it is unclear if “a midsole” is a new/different structure than the previously recited “a midsole” in claim 1. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as, “[[a]] the sport shoe comprising [[a]] the midsole according to claim 1”.
Claim 14 recites the limitation “the foot arch of the upper” in line 4. There is insufficient antecedent basis for this limitation in the claim as there is no “a foot arch of the upper” previously recited. It is unclear if the “foot arch of the upper” is a necessary structure or a recitation of intended use. Therein the meets and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as, “a foot arch of the upper”.
Claim 17 is/are indefinite as it/they recite(s) “wherein the one or more horizontal tilting slits each have a depth which is 5% and 12% of a total width of the midsole at the position of the corresponding horizontal tiliting slit of the midsole”. It is unclear how the one or more horizontal tilting slits can have both a depth of 5% and a depth of 12% at the same time. The Specification states the same limitation as the claim, which does not clarify the issue. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as, “wherein the one or more horizontal tilting slits each have a depth which is 5% to 12% of a total width of the midsole at the position of the corresponding horizontal tilting slit of the midsole”.
Claim 20 is/are indefinite as it/they recite(s) “a shoe sole comprising a midsole according to claim 1”. It is unclear if this “a shoe” (for the sole) is the same or a new/different structure than the previously recited “sport shoe” of claim 1. It is further unclear if the limitation “for a sport shoe” was a recitation of intended use and the shoe is now required for the claim. Further, it is unclear if “a midsole” is a new/different structure than the previously recited “a midsole” in claim 1. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as, “a shoe sole of the sport shoe comprising [[a]] the midsole according to claim 1”.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim(s) 11 & 12 is/are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim(s) upon which it/they depend(s), or for failing to include all the limitations of the claim(s) upon which it/they depend(s).
Claim 11: MPEP 608.01(n) states: “a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed.” Claim 11 depends from claim 19. Claim 19 follows after claim 11, which makes the claim dependency improper.
Claim 12: MPEP 608.01(n) states: “a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed.” Claim 12 depends from claim 20. Claim 20 follows after claim 12, which makes the claim dependency improper.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-3, 6-11, 13, and 18-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang US 20040154189.
Regarding Independent Claim 1, Wang discloses a midsole (Figs. 1-6 #1/2, seen alone in Fig. 3 & 6) for a sport shoe (Fig. 1; ¶0002), the midsole comprising: a. a forefoot area (Wang Annot. Fig. 2), a heel area (Wang Annot. Fig. 2) and a midfoot area (Wang Annot. Fig. 2) arranged between the forefoot area and the heel area (Fig. 2); b. a top layer (Fig. 4 #1) and an opposing base layer (Fig. 1 #2); c. a heel edge (Wang Annot. Fig. 2) and a midsole tip (Wang Annot. Fig. 2), wherein a longitudinal direction of the midsole (Wang Annot. Fig. 2) extends from the heel edge to the midsole tip (Wang Annot. Fig. 3); d. one or more horizontal tilting slits (Wang Annot. Fig. 3) being arranged on a medial side and/or on a lateral side of the midsole (Fig. 4), wherein the one or more horizontal tilting slits horizontally divide the midsole (Figs. 2-5) in a midsole top portion (Wang Annot. Fig. 2) and a midsole base portion (Wang Annot. Fig. 2), wherein each horizontal tilting slit is configured to tilt the midsole top portion with respect to the midsole base portion (Figs. 1-6 show the midsole top portion and the midsole base portion integrated in such a way that they would move together; ¶0004, 0025, 0032 discuss the midsole combination formation).
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 Prior Art of Wang discloses the structure of the midsole, there would be a reasonable expectation for the midsole to perform such functions as explained after each functional limitation.
Regarding Claim 2, Wang discloses the midsole according to claim 1, wherein the midsole comprises a medial sided horizontal tilting slit (Wang Annot. Fig. 2 opposite side of lateral sided horizontal tilting slit) and/or a lateral sided horizontal tilting slit (Wang Annot. Fig. 2).
Regarding Claim 3, Wang discloses the midsole according to claim 1, wherein the one or more horizontal tilting slits are arranged in the midfoot area of the midsole (Wang Annot. Fig.2).
Regarding Claim 6, Wang discloses the midsole according to claim 1, wherein the midsole comprises one or more tiltable blocks (Figs. 3-5 #21), wherein each tiltable block is partially defined by a horizontal tilting slit (Figs. 4-5).
Regarding Claim 7, Wang discloses the midsole according to claim 6, wherein each tiltable block is further defined by one or more sideward slits (Wang Annot. Fig. 3), wherein each sideward slit extends from the horizontal tilting slit to the top layer of the midsole (Wang Annot. Fig. 3).
Regarding Claim 8, Wang discloses the midsole according to claim 7, wherein at least some of the tiltable blocks have in the cross section along the longitudinal direction and perpendicular to the transverse direction a trapezoid shape or a shape of a rectangle or a parallelogram (Fig. 6; ¶0026).
Regarding Claim 9, Wang discloses the midsole according to claim 1, wherein the midsole defines a plurality of recessed pockets which are open towards the top layer (Wang Annot. Fig. 2) and wherein at least a some of the recessed pockets are in the longitudinal direction arranged one after another (Wang Annot. Fig. 2).
Regarding Claim 10, Wang discloses the midsole according to claim 9, wherein the recessed pockets are arranged at least in the forefoot area (Wang Annot. Fig. 2).
Regarding Claim 11, Wang discloses the midsole according to claim 19, wherein the central notch extends from the forefoot area through the midfoot area to the heel area (Wang Annot. Fig. 2).
Regarding Claim 13, Wang discloses a shoe comprising a midsole according to claim 1, wherein the shoe further comprises an upper being attached to the midsole (Fig. 1 shows the upper attached to the midsole).
Regarding Claim 18, Wang discloses the midsole according to claim 10, wherein the recessed pockets are arranged in the forefoot area and in the midfoot area (Figs. 2-6).
Regarding Claim 19, Wang discloses the midsole according to claim 1, further comprising a central notch (Wang Annot. Fig. 2) extending in the longitudinal direction through the midfoot area (Wang Annot. Fig. 2).
Claim(s) 1 and 13-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Baudouin US 20090090027.
Regarding Independent Claim 1, Baudouin discloses a midsole (Figs. 1-9 #40) for a sport shoe (Figs. 1-9 #90), the midsole comprising: a. a forefoot area (Fig. 1 #11), a heel area (Fig. 1 #13) and a midfoot area (Fig. 1 #12) arranged between the forefoot area and the heel area (Fig. 1); b. a top layer (Fig. 5A-7 #40A) and an opposing base layer (Fig. 5A-7 #40B); c. a heel edge (Fig. 1 #21) and a midsole tip (Fig. 7 #23), wherein a longitudinal direction of the midsole (Fig. 1 #1) extends from the heel edge to the midsole tip (Fig. 1); d. one or more horizontal tilting slits (Figs. 1-9 #70-78/ Baudouin Annot. Fig. 7) being arranged on a medial side (Fig. 1 #15) and/or on a lateral side (Fig. 1 #15) of the midsole (Figs. 1-9), wherein the one or more horizontal tilting slits horizontally divide the midsole (Figs. 1-9) in a midsole top portion (Figs. 1-9 #40A and above) and a midsole base portion (Figs. 1-9 #4B and below), wherein each horizontal tilting slit is configured to tilt the midsole top portion with respect to the midsole base portion (¶0033-0038).
Regarding Claim 13, Baudouin discloses a shoe comprising a midsole according to claim 1, wherein the shoe further comprises an upper being attached to the midsole (Fig. 6 #50).
Regarding Claim 14, Baudouin discloses the shoe according to claim 13, wherein the shoe further comprises a support mechanism (Figs. 1-9 #10), wherein the support mechanism is connected to the midsole top portion above the one or more horizontal tilting slits (Fig. 6) and extends over the foot arch of the upper (Figs. 6-7) and wherein the support mechanism is configured to support tilting of the midsole top portion with respect to the midsole base portion (¶0032-0038).
Regarding Claim 15, Baudouin discloses the shoe according to claim 14, wherein the support mechanism comprises a plurality of straps (Figs. 1-9 #30-37).
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) 4-5 and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang as applied to claim 1 above.
Regarding Claim 4, Wang discloses the midsole according to claim 1, but does not expressly disclose wherein the one or more horizontal tilting slits each have a depth of 5 mm to 8 mm. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to make the one or more horizontal tilting slits each have a depth of 5 mm to 8 mm in order to allow for the desired aesthetic, shift during movement, and cushioning effect, and since the claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05.
Regarding Claim 5, Wang discloses the midsole according to claim 1, but does not expressly disclose wherein the one or more horizontal tilting slits each have a depth which is 4% and 25% of a total width of the midsole at the position of the corresponding horizontal tilting slit of the midsole. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to make the one or more horizontal tilting slits each have a depth which is 4% and 25% of a total width of the midsole at the position of the corresponding horizontal tilting slit of the midsole in order to allow for the desired aesthetic and shift or slide of the parts during use, and since the claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05.
Regarding Claim 16, Wang discloses the midsole according to claim 1, but does not expressly disclose wherein the one or more horizontal tilting slits each ahave a depth of 3 mm to 25 mm. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to make the one or more horizontal tilting slits each have a depth of 3 mm to 25 mm in order to allow for the desired aesthetic, shift during movement, and cushioning effect, and since the claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05.
Regarding Claim 17, Wang discloses the midsole according to claim 1, but does not expressly disclose wherein the one or more horizontal tilting slits each have a depth which is 5% and 12% of a total width of the midsole at the position of the corresponding horizontal tiliting slit of the midsole. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to make the one or more horizontal tilting slits each have a depth which is 5% and 12% of a total width of the midsole at the position of the corresponding horizontal tilting slit of the midsole in order to allow for the desired aesthetic and shift or slide of the parts during use, and since the claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05.
Claim(s) 12 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang as applied to claim 1 above, and further in view of Geer US 20050034328.
Regarding Claim 12, the modified midsole of Wang discloses the midsole according to claim 20, wherein the elastic plate comprises a plurality of protrusions (Figs. 4-6 #34/34a-c) which are inserted into the recessed pockets of the midsole (Figs. 4-6 #30).
Regarding Claim 20, Wang discloses a shoe sole comprising a midsole according to claim 1, but does not expressly disclose wherein the shoe sole further comprises an elastic plate arranged on the top layer of the midsole.
Geer teaches a shoe sole (Figs. 1-7 & 12 #120122/124/126/130) further comprises an elastic plate (Abstract; ¶0005, 0009, 0103 (notes: “flexibility in bending or in torsion”, 0113, 0164) arranged on the top layer of the midsole (Figs. 4-6).
Both Wang and Geer teach analogous inventions in the art of sport shoes with cavities. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Wang with the teachings of Geer such that the shoe sole would have an elastic plate arranged on the top layer of the midsole so that, “Pressure distribution is often accomplished using a plate-like structure wherein the amount of pressure distribution is controlled by the type and thickness of the plate material… This plate-like structure provides support and diffuses forces in the heel,” (Geer ¶0005 and 0009, respectively).
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Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Miner US 2014028997 teaches a shoe with horizontal slits in the midsole
Hurd US 8151485 teaches a shoe with horizontal slits in the midsole
Boggia US 4756098 teaches a shoe with a support structure and horizontal slits in the midsole
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ALISSA J. TOMPKINS can be reached on 571-272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RAQUEL M. WEIS/Examiner, Art Unit 3732
/HEATHER MANGINE, Ph.D./Primary Examiner, Art Unit 3732