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 .
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.
Claims 21 and 23-30 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 21 is rejected because it recites limitations “a cushion received within the cavity and retained in a predetermined position within the cavity due to frictional engagement between a material of the midsole and an outer surface of the cushion, the cushion being a distinct component separate from the midsole”. It is not clear how the cushion is a distinct separate from the midsole. The limitations seem to claim an incomplete sole structure (i.e. the cushion is still distinctly separate from the midsole). Also, the limitations created question that the cushion is a completely different structure from the midsole or the cushion can be taken off from the midsole.
In this instant case the specification does not clearly answer the questions above. Any remaining claims are rejected as depending from a rejected base claim. In the art rejections below the claims have been treated as best understood by the examiner.
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.
Claim(s) 1-10, 21, and 23-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Allen et al. (5,363,570) in view of Nakato (2014/0137437).
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Regarding claim 1, Allen teaches a sole structure for an article of footwear, the sole structure (figs 1-12) comprising:
a midsole (member 42) including a window (members 138 and 142) in fluid communication with a cavity having a first projection extending from a first surface within the cavity in a first direction to a distal end, the distal end defining a planar surface and a bevel extending from the planar surface to one of the first arcuate end and the second arcuate end, the one of the first arcuate end and the second arcuate end defining a convex surface opposing the window (fig 10, member 138), and a second projection extending from a second surface within the cavity in a second direction toward the first projection (fig 10, member 142); and
a cushion (member 10) including a first recess provided on a first side of the cushion and a second recess provided on an opposite, second side of the cushion, the first recess receiving the first projection and the second recess receiving the second projection (fig 3 annotated above).
Allen does not teach the cavity in a first direction to a distal end extending between a first arcuate end and a second arcuate end.
Nakato teaches a cavity having a distal end extending between a first arcuate end and a second arcuate end (fig 14).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to modify the shape of the cavity of Allen by using the arcuate ends of Nakato in order to achieve the design as needed. In addition, applicant does not provide any criticality or unexpected results why the cavity must have the arcuate ends; therefore the court held that the particular placement of a structure was held to be an obvious matter of design choice. The prior art must provide a motivation or reason for the worker in the art, without the benefit of appellant’s specification, to make the necessary changes in the reference device." Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351, 353 (Bd. Pat. App. & Inter. 1984).
Regarding claim 2, the modified sole structure Allen-Nakato discloses the first projection is aligned with the second projection (fig 3 annotated above).
Regarding claim 3, the modified sole structure Allen-Nakato discloses the distal end of the first projection opposes and is aligned with a distal end of the second projection (fig 3 annotated above).
Regarding claim 4, the modified sole structure Allen-Nakato discloses the second projection is elongate and extends between a first end and a second end along a longitudinal axis of the second projection, at least one of the first end of the second projection and the second end of the second projection including a bevel (fig 3 annotated above).
Regarding claim 5, the modified sole structure Allen-Nakato discloses the first projection substantially fills the first recess and the second projection substantially fills the second recess (fig 3 annotated above).
Regarding claim 6, the modified sole structure Allen-Nakato discloses the cushion is a bladder (Allen, col 5, line 6).
Regarding claim 7, the modified sole structure Allen-Nakato discloses the bladder includes a first barrier layer joined to a second barrier layer to define a chamber, the chamber having a plurality of segments defined by a web area of the bladder (Allen, members 24 and 32).
Regarding claim 8, the modified sole structure Allen-Nakato discloses a portion of the web area is disposed between the a-distal end of the first projection and a distal end of the second projection (fig 3 annotated above).
Regarding claim 9, the modified sole structure Allen-Nakato discloses the bladder is pressurized (i.e. fluid filled or fluid tight, Allen, col 3, lines 29-52 and col 5, lines 61-63).
Regarding claim 10, the modified sole structure Allen-Nakato discloses an article of footwear incorporating the sole structure of Claim 1 (Allen, fig 1).
Regarding claim 21, Allen teaches a sole structure for an article of footwear, the sole structure comprising:
a midsole (member 42) including a window (members 138 and 142) in fluid communication with a cavity having a first projection extending from a first surface within the cavity in a first direction to a distal end, the distal end defining a planar surface and a bevel extending from the planar surface to one of the first arcuate end and the second arcuate end, the one of the first arcuate end and the second arcuate end defining a convex surface opposing the window (fig 10, member 138), and a second projection extending from a second surface within the cavity in a second direction toward the first projection (fig 10, member 142); and
a cushion (member 10) including a first recess provided on a first side of the cushion and a second recess provided on an opposite, second side of the cushion, the first recess receiving the first projection and the second recess receiving the second projection (fig 3 annotated above).
Allen does not teach the cavity in a first direction to a distal end extending between a first arcuate end and a second arcuate end.
Nakato teaches a cavity having a distal end extending between a first arcuate end and a second arcuate end (fig 14).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to modify the shape of the cavity of Allen by using the arcuate ends of Nakato in order to achieve the design as needed. In addition, applicant does not provide any criticality or unexpected results why the cavity must have the arcuate ends; therefore the court held that the particular placement of a structure was held to be an obvious matter of design choice. The prior art must provide a motivation or reason for the worker in the art, without the benefit of appellant’s specification, to make the necessary changes in the reference device." Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351, 353 (Bd. Pat. App. & Inter. 1984).
Regarding claim 23, the modified sole structure Allen-Nakato discloses the first projection is received by a first recess of the cushion (fig 3 annotated above).
Regarding claim 24, the modified sole structure Allen-Nakato discloses the first projection is in contact with the outer surface of the cushion within the first recess (fig 3 annotated above).
Regarding claim 25, the modified sole structure Allen-Nakato discloses the first projection substantially fills the first recess (fig 3 annotated above).
Regarding claim 26, the modified sole structure Allen-Nakato discloses the cushion is a bladder (Allen, col 5, line 6).
Regarding claim 27, the modified sole structure Allen-Nakato discloses the bladder includes a first barrier layer joined to a second barrier layer to define a chamber (Allen, members 34-35), the chamber having a plurality of segments defined by a web area of the bladder (Allen, members 24 and 32).
Regarding claim 28, the modified sole structure Allen-Nakato discloses the bladder is pressurized (i.e. fluid filled or fluid tight, Allen, col 3, lines 29-52 and col 5, lines 61-63).
Regarding claim 29, the modified sole structure Allen-Nakato discloses at least one of a top surface and a bottom surface defining the cavity includes a texture (Allen, col 7, lines 18-65).
Regarding claim 30, the modified sole structure Allen-Nakato discloses an article of footwear incorporating the sole structure of Claim 21 (Allen, fig 1).
Regarding claim 31, the modified sole structure Allen-Nakato discloses the cushion includes a first segment having a substantially planar first surface extending between a first distal end and a second distal end and a second surface including a taper extending toward the first surface and a second segment having a substantially planar third surface extending between a third distal end and a fourth distal end and a fourth surface including a taper extending toward the third surface (Allen, figs 3-4).
Response to Arguments
Applicant’s arguments, dated 04-28-2026, with respect to the rejection of claims under 35 U.S.C §112(b) have been fully considered, but are not persuasive as analyzed above
Applicant's arguments, date 24-28-2026, with respect to the rejections of claims under 35 U.S.C §102 have been fully considered, but they are not persuasive applicant argues that the prior art does not teach the amended limitations. However, this argument is not commensurate with the rejected claims, as the limitations have not been previously presented and they have been address as analyzed above.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BAO-THIEU L NGUYEN whose telephone number is (571)270-0476. The examiner can normally be reached M-F 7am-3pm.
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BAO-THIEU L. NGUYEN
Primary Examiner
Art Unit 3732
/BAO-THIEU L NGUYEN/Primary Examiner, Art Unit 3732
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