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 Group I: Claims 1-4, 6, 9-15, 17 and 20-21 in the reply filed on November 12, 2025 is acknowledged. (It is noted that Applicant incorrectly identified Claims 1-12 as being Group I on Pg.8 of Applicant’s Arguments/Remarks. However, a review of the Requirement for Restriction filed 09/16/2025 and Pg.6 of Applicant’s Arguments/Remarks accurately detail Group I as Claims 1-4, 6, 9-15, 17 and 20-21.) The traversal is on the ground(s) that claims 1 and 12 now overcome Lohrer. This is not found persuasive because a Lack of Unity restriction is based on the claims as originally filed and any amendment to the claims after the restriction has been issued, do not invalidate the Lack of Unity. For these reasons, Applicant’s traverse is not found persuasive.
The requirement is still deemed proper and is therefore made FINAL.
Claims 5, 7-8, 16 and 18-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on November 12, 2025. Claims 1-4, 6, 9-15, 17 and 20-21 are currently pending. It is noted that Applicant incorrectly identified Claims 1-12 as being Group I
Claim Objections
1. Claims 1-2 and 12-13 are objected to because of the following informalities: Claims 1-2 and 12-13 contain additional period marks, this is an error as only one period is allowed at the end of the claim per US patent practice. All additional periods must be removed from the claims. Appropriate correction is required.
2. Claim 12 is objected to because of the following informalities: Claim 12 recites “heel ends” which appears to be an error and should read “heel end”. All additional periods must be removed from the claims. Appropriate correction is required.
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.
3. Claims 1-4, 6, 9-15, 17 and 20-21 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 1 and 12 recite “said outsole having a downward facing surface-engaging outsole bottom”. The claim limitation is indefinite as it is unclear what Applicant is intending to claim. It appears Applicant meant to claim the outsole having a ground-engaging bottom surface, the claim should be clarified by Applicant. Claims 1 and 12 are rejected as best understood by examiner.
Claims 9 and 20 recite “wherein the outsole is by material of manufacture substantially rigid”. The term “substantially rigid” in claims 9 and 20 is a relative term which renders the claim indefinite. The term “substantially rigid” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Further, the claim limitation is indefinite as it does not make sense. It appears Applicant intended to claim the outsole is formed from a substantially rigid material. Claims 9 and 20 are rejected as best understood by examiner.
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.
4. Claim(s) 1-4, 6, 9, 12-15, 17, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moreno (FR 2,735,334 A1).
Regarding Claim 1, Moreno discloses a training footwear having a toe end and a heel end and comprising an upper (11,11’) with an outsole joined to the bottom thereof and extending downwardly therefrom (as seen in Fig.4 & annotated Figure below), said outsole having a downward facing surface-engaging outsole bottom (i.e. line where outsole and ridge meet) having an axial ridge extending downwardly from the outsole bottom along a center line of the outsole substantially from the toe end to the heel end of the footwear (as seen in Fig.4 & annotated Figure below), wherein:
a. said axial ridge comprises a toe end (5) and heel end (6) corresponding to the toe end and heel end of the footwear (as seen in Fig.4 & annotated Figure below);
b. the toe end (5) and heel end (6) of the ridge are each tapered upward to the outsole bottom at each of the toe end and heel end of the footwear (as seen in Fig.4 & annotated Figure below), wherein a taper at the toe end of the ridge extends upward toward the toe end of the footwear along a length of the ridge, and wherein a taper at the heel end of the ridge extends upward toward a heel end of the footwear along the length of the ridge (as seen in Fig.4 & annotated Figure below), and
c. wherein the outsole and the ridge are of unitary manufacture (as seen in Fig.4 & 5).
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Regarding Claim 2, Moreno discloses a training footwear of Claim 1 wherein:
a. the axial ridge comprises a substantially flat bottom surface (13), a left-hand side surface (left 2), and a right-hand side surface (right 2);
b. the left-hand side surface and the right-hand side surface extend upwards from the bottom surface of the ridge in the direction of a respective left-hand side edge and right-hand side edge of the outsole bottom (as seen in Fig.5 & annotated Figure above); and
c. the left-hand side surface and the right-hand side surface form tapers upward toward the respective left-hand side edge and right-hand side edge of the outsole bottom (as seen in Fig.5 & annotated Figure above).
Regarding Claim 3, Moreno discloses a training footwear of Claim 2 wherein the left-hand side surface and the right-hand side surface are tapered in a linear or convex manner (as seen in Fig.5 & annotated Figure above, 2 are tapered in a linear manner).
Regarding Claim 4, Moreno discloses a training footwear of Claim 2 wherein the taper of the left-hand side surface and the right-hand side surface is constant along the ridge (as seen in Fig.5 & annotated Figure above).
Regarding Claim 6, Moreno discloses a training footwear of Claim 2 wherein the bottom surface (13) of the ridge has a constant width along the ridge from the toe end to the heel end of the footwear (as seen in Fig.3-5).
Regarding Claim 9, Moreno discloses a training footwear of Claim 1 wherein the outsole is by material of manufacture substantially rigid (i.e. the outsole is formed of substantially rigid material, inasmuch as has been claimed by Applicant, in that the outsole supports the weight of a user and therefore the material is “substantially rigid” to some degree).
Regarding Claim 12, Moreno discloses an outsole for use as a component of a training footwear article having a toe end and a heel end and comprising an upper (11,11’) for attachment of the outsole to the bottom thereof and extending downwardly therefrom (as seen in Fig.4 & annotated Figure below), said outsole having a downward facing surface-engaging outsole bottom (i.e. line where outsole and ridge meet) having an axial ridge extending downwardly from the outsole bottom along a center line of the outsole substantially from the toe end to the heel end of the footwear (as seen in Fig.4 & annotated Figure above), wherein:
a. said axial ridge comprises a toe end and heel end corresponding to the toe end and heel ends of the footwear;
b. the toe end (5) and heel end (6) of the ridge are each tapered upward to the outsole bottom at each of the toe end and heel end of the footwear (as seen in Fig.4 & annotated Figure above), wherein the toe end of the ridge and the heel end of the ridge are tapered along a length of the ridge (as seen in Fig.4 & annotated Figure above); and
c. wherein the outsole and the ridge are of unitary manufacture (as seen in Fig.4 & 5).
Regarding Claim 13, Moreno discloses an outsole of Claim 12 wherein:
d. the axial ridge comprises a substantially flat bottom surface (13), a left-hand side surface (left 2), and a right-hand side surface (right 2);
e. the left-hand side surface and the right-hand side surface extend upwards from the bottom surface of the ridge in the direction of a respective left-hand side edge and right-hand side edge of the outsole bottom (as seen in Fig.5 & annotated Figure above); and
f. the left-hand side surface and the right-hand side surface form tapers upward toward the respective left-hand side edge and right-hand side edge of the outsole bottom (as seen in Fig.5 & annotated Figure above).
Regarding Claim 14, Moreno discloses an outsole of Claim 13 wherein the left-hand side surface and the right-hand side surface are tapered in a linear or convex manner (as seen in Fig.5 & annotated Figure above, 2 are tapered in a linear manner).
Regarding Claim 15, Moreno discloses an outsole of Claim 13 wherein the taper of the left-hand side surface and the right-hand side surface is constant along the ridge (as seen in Fig.5 & annotated Figure above).
Regarding Claim 17, Moreno discloses an outsole of Claim 13 wherein the bottom surface (13) of the ridge has a constant width along the ridge from the toe end to the heel end of the footwear (as seen in Fig.3-5).
Regarding Claim 20, Moreno discloses an outsole of Claim 12 wherein the outsole is by material of manufacture substantially rigid (i.e. the outsole is formed of substantially rigid material, inasmuch as has been claimed by Applicant, in that the outsole supports the weight of a user and therefore the material is “substantially rigid” to some degree).
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.
5. Claim(s) 10-11 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moreno (FR 2,735,334 A1) in view of Fox (US 5,507,106).
Regarding Claims 10-11 and 21, Moreno discloses the invention substantially as claimed above. Moreno does not disclose wherein the upper further comprises an ankle support portion, and wherein the upper is designed as the upper of a running shoe or a boot. However, Fox teaches a shoe with an outsole and an upper (11) comprising an ankle support portion (i.e. ankle opening), and wherein the upper is designed as the upper of a running shoe or a boot (inasmuch as has been claimed by Applicant, the upper of the shoe is capable of being run in and therefore, is a running shoe).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the upper of Moreno for the upper of Fox, as a simple substitution of one well known type of footwear upper for another, in order to yield the predictable result of providing an upper that holds the shoe to a user’s foot during use.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGAN E LYNCH whose telephone number is (571)272-3267. The examiner can normally be reached Monday to Friday, 8:00am-4:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached at 571-272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732