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 .
Response to Amendments
The amendments filed with the written response received on 09 June 2026 have been considered and an action on the merits follows. As directed by the amendment, claim(s) 1-3, 6, 8-10, 12-14, and 16-19 has/have been amended, claim(s) 5, 7, 11, and 20 is/are canceled, and claim(s) 21-24 has/have been added. Accordingly, claim(s) 1-4, 6, 8-10, 12-19, and 21-24 is/are pending in this application with an action on the merits to follow.
Because of the applicant’s amendment, the following in the office action filed 09 June 2026, are hereby withdrawn:
Claim Objections
Rejections under 35 USC 112(b)
Rejections under 35 USC 112(d)
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) 6, 8-10, and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang US 20040154189.
Regarding Independent Claim 6, 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); wherein the midsole comprises one or more tiltable blocks (Figs. 3-5 #21), wherein each tiltable block of the one or more tiltable block is partially defined by a horizontal tilting slit (Figs. 4-5) of the one or more horizontal tilting slits (Figs. 4-5); and wherein each tiltable block of the one or more tiltable blocks is further defined by one or more sideward slits (Wang Annot. Fig. 3), 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 an upper surface of the midsole (Wang Annot. Fig. 3), the upper surface being a vertical delimitation of the midsole defined by the top layer of the midsole (Fig. 3).
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 8, Wang discloses the midsole according to claim 6, wherein at least some of the tiltable blocks of the one of more tiltable blocks have in the cross section along the longitudinal direction of the midsole (Fig. 6; ¶0026), and the atleast some of the tiltable blocks have a cross section perpendicular to the transverse direction a trapezoid shape or a shape of a rectangle or a parallelogram (Fig. 6; ¶0026).
Regarding Independent Claim 9, 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); and wherein the midsole defines a plurality of recessed pockets which are open at a top of the midsole (Wang Annot. Fig. 2 shows pockets open at a top of the midsole) and wherein at least a some of the recessed pockets are in the longitudinal direction of the midsole and are arranged one after another (Wang Annot. Fig. 2).
Regarding Claim 10, Wang discloses the midsole according to claim 9, wherein the plurality of recessed pockets are arranged at least in the forefoot area (Wang Annot. Fig. 2).
Regarding Claim 18, Wang discloses the midsole according to claim 10, wherein the plurality of recessed pockets are arranged in the forefoot area and in the midfoot area (Figs. 2-6).
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) 1-4, 16-17, 21, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang.
Regarding Independent Claim 1, Wang discloses a midsole (Figs. 1-6 #1/2, seen alone in Fig. 3 & 6) for a 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), wherein the midfoot area is 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).
Wang 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 2, the modified midsole of Wang discloses the midsole according to claim 1, wherein the one or more horizontal tilting slits 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, the modified midsole of Wang discloses the midsole according to claim 1, wherein the one or more horizontal tilting slits are arranged at least in the midfoot area of the midsole (Wang Annot. Fig.2).
Regarding Claim 4, the modified midsole of 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 16, the modified midsole of 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 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, the modified midsole of 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% to 12% 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 5% to 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.
Regarding Claim 21, the modified midsole of Wang discloses the midsole according to claim 1, wherein the one or more horizontal tilting slits each have a length in the longitudinal direction (Figs. 1-6), but does not expressly disclose that length of the midsole is between 50 mm and 200 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 length in the longitudinal direction of the midsole of between 50 mm and 200 mm 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 24, the modified midsole of Wang discloses the midsole according to claim 1, wherein each horizontal tilting slit has a width (Figs. 1-6), which defines a distance between the midsole top portion arranged above the horizontal tilting slit and the midsole base portion arranged below the horizontal tilting slit (Figs. 1-6), but does not expressly disclose that the width is at least 0.3 mm. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to make each horizontal tilting slit have a width of at least 0.3 mm 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) 1 and 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miner US 20140289977.
Regarding Independent Claim 1, Miner discloses a midsole (Figs. 1-7 #200; ¶0045) for a shoe (Figs. 1-7 #100), the midsole comprising: a. a forefoot area (Fig. 3 #10), a heel area (Fig. 3 #14) and a midfoot area (Fig. 3 #12), wherein the midfoot area is arranged between the forefoot area and the heel area (Fig. 2); b. a top layer (Fig. 4 #259) and an opposing base layer (Fig. 1 #263); c. a heel edge (Figs. 1-4) and a midsole tip (Figs. 1-4), wherein a longitudinal direction of the midsole (Figs. 1-4 forefoot to heel direction) extends from the heel edge to the midsole tip (Figs. 1-4); d. one or more horizontal tilting slits (Figs. 1-6 #281/282) being arranged on a medial side and/or on a lateral side of the midsole (Fig. 4 #16/18; Figs. 1-7), wherein the one or more horizontal tilting slits horizontally divide the midsole (Figs. 1-7) in a midsole top portion (Fig. 4 #250) and a midsole base portion (Fig. 4 #252), 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; ¶0049, 0063 discuss the midsole combination formation).
Miner 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 22, the modified midsole of Miner discloses the midsole according to claim 1, wherein the one or more horizontal tilting slits are not through slits extending completely from the medial side to the lateral side (Fig. 4)
Regarding Claim 23, the modified midsole of Miner discloses the midsole according to claim 1, wherein each horizontal tilting slit defines a region at which the midsole top portion is not bonded to the midsole base portion (Fig. 4 shows slots #211-213 which are unconnected to the base portion), for tilting the midsole top portion with respect to the midsole base portion (¶0063).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang as applied to claim 9 above, and further in view of Geer US 20050034328.
Regarding Claim 12, the modified midsole of Wang discloses a shoe sole for the shoe (Fig. 1; Abstract), comprising the midsole according to claim 9, and 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).
Wang 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).
Allowable Subject Matter
Claim 19 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.
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Response to Arguments
Applicant’s arguments, filed 09 June 2026, with respect to the 35 USC 102 rejection of claims 1-3, 6-11, 13, and 18-19, and the 35 USC 103 rejection of claims 4-5, 12, 16-17, and 20 have been considered but are not persuasive.
Regarding the 35 USC 102 rejection of claim 1, Applicant argues:
Adding the limitations of claim 5 to claim 1 overcome the prior art, that “Wang also does not disclose the requirement of Claim 1 that ‘each horizontal tilting slit ... is configured to tilt the midsole top portion with respect to the midsole base portion,’” and that the midsole of Wang would not function as described since “Wang is fundamentally incompatible with a modification for these slits to ‘tilt the midsole top portion with respect to the midsole base portion,’ since doing so would cause the midsole of Wang to fall apart.” (Remarks Pgs. 8-9)
The Examiner respectfully disagrees. Adding the limitations of claim 5 to claim 1 does not make the claim allowable as claim 5 was rejected under Wang in the Non-Final Rejection of 09 March 2026 as an obvious matter of an optimum or workable range. Further, the claim recites, “each horizontal tilting slit ... is configured to tilt the midsole top portion with respect to the midsole base portion.” The slits would move together when the shoe is in use, and thus the midsole top portion would move with respect to the midsole base portion as they would move together. See 35 USC 103 rejection above.
Regarding the 35 USC 102 rejection of claim 6, Applicant argues:
Adding the limitations of claim 7 to claim 1 overcome the prior art, that “’from the horizontal tilting slit ... to an upper surface of the midsole, the upper surface being a vertical delimitation of the midsole defined by the top layer of the midsole.’ In contrast, the alleged “tiltable blocks” in Wang are necessarily entirely confined inside the midsole, rather than extending to an upper surface of the midsole in the manner claimed. Additionally, Wang is technically incompatible with any modifications to arrive at the claimed invention, since doing so would render the alleged 'blocks' incapable of their intended purpose of forming channels between the containers 11 and 12 in Wang. (Remarks Pgs. 9-10)
The Examiner respectfully disagrees. Adding the limitations of claim 7 to claim 6 does not make the claim allowable as claim 5 was rejected under Wang in the Non-Final Rejection of 09 March 2026. Further, Wang discloses, “and wherein each tiltable block of the one or more tiltable blocks is further defined by one or more sideward slits (Wang Annot. Fig. 3), 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 an upper surface of the midsole (Wang Annot. Fig. 3), the upper surface being a vertical delimitation of the midsole defined by the top layer of the midsole (Fig. 3).” The claim is directed specifically to the one or more sideward slits of the tiltable blocks, not the horizonal tilting slits of the tiltable blocks. Fig. 3 shows the vertical delimitation of the midsole at the top layer as there is an obvious vertical boundary of the midsole. See 35 USC 102 rejection above.
Regarding the 35 USC 102 rejection of claim 9, Applicant argues:
That, “Wang also does not disclose that ‘each horizontal tilting slit ... is configured to tilt the midsole top portion with respect to the midsole base portion,’” and that “clarifying that the plurality of recessed pockets are open ‘towards the top layer at a top of the midsole’.” (Remarks Pg. 11)
The Examiner respectfully disagrees. The claim recites, “each horizontal tilting slit ... is configured to tilt the midsole top portion with respect to the midsole base portion.” The slits would move together when the shoe is in use, and thus the midsole top portion would move with respect to the midsole base portion as they would move together. Further, Wang shows the pockets open towards the top layer of the midsole at a top of the midsole in Wang Fig. 2. See 35 USC 103 rejection above.
Applicant submits that the dependent claims are patentable based on their dependencies from claim(s) 1, 6, and 9; however, as discussed in the rejection and in the arguments above, claim(s) 1, 6, and 9 are not allowable over the prior art. Therefore, these arguments have not been found convincing and the rejections of the independent claims under 35 U.S.C. 102 and/or 103 have been maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
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.
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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
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