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 .
Specification (Abstract)
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it begins with a statement which can be implied (“The present disclosure relates to…”). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 1, 2, 4, 8-14 and 16-19 are objected to because of the following informalities:
Claims 1, 2, 4, 8 and 17-19 all include words that are split between two lines and hyphenated. In the event the claims are allowed, the resulting patent document will likely not contain the same amount of words per line, and these hyphenations may result within the middle of a line of text, which may render the terms unclear. Applicant is suggested to amend all instances of the word-wrap hyphenations so that the hyphens are removed and the words are permitted to wrap to the next line, if of such a length.
Claims 9-11, 14-17 and 19 all recite “and / or”; all instances of “and / or” are suggested to have the spaces removed so that they recite “and/or” without the spaces
Claim 9, line 4: “at least one lower protrusions” should recite “at least one lower protrusion”
Claim 10, line 3: “the one or more lower protrusions” should recite “the at least one lower protrusion” for the sake of consistent claim terminology
Claim 10, line 4: “the at least one upper recess” should refer to “the upper recesses” since “upper recesses” is positively recited in line 5 of claim 9, from which claim 10 depends; alternatively, claim 9 can be amended to refer to “at least one upper recess” in line 5 thereof.
Claim 11, line 2: “the one or more lower protrusion” should recite “the at least one lower protrusion” for the sake of consistent claim terminology
Claim 13, lines 1-2: “the at least one upper recess” should refer to “the upper recesses” since “upper recesses” is positively recited in line 5 of claim 9, from which claim 13 depends; alternatively, claim 9 can be amended to refer to “at least one upper recess” in line 5 thereof.
Claim 16, line 2: “one or more side surface” should recite “one or more side surfaces”
Claim 17, line 2: “the one or more lower protrusion” should recite “the at least one lower protrusion” for the sake of consistent claim terminology
Claims 2, 11, 12, 16 and 17: Applicant recites reference symbols within parentheses for some elements, but not others, and appears to do so inconsistently at least once:
Claim 12 recites “the sole (101)”, but all other references to the “sole” throughout the claims do not include a reference numeral in parentheses.
Claims 11 and 12 recite “are spaced apart (w)”, wherein the “(w)” does not appear to be attributable to any particular dimension (i.e. one of ordinary skill in the art may interpret “(w)” as referencing “width”, for example, although no “width” is ever recited in the context of the “(w)” in the claims)
Examiner suggests deleting the reference symbols in parentheses in all of the affected claims (this would be preferred, since the reference symbols are not particularly required for understanding the claimed subject matter), or, if Applicant is compelled to include the reference symbols in parentheses in the claims, Applicant should apply them consistently throughout the claims.
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 2, 9 and 18 (and claims 10-17 at least due to dependency from claim 9) 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.
Regarding claim 2, Applicant recites “a heel to toe axis…of the sole” in line 3, and again in line 5. It is unclear if there are two heel to toe axes, or line 5 should refer to “the heel to toe axis…of the sole”. Correction is required. As best as can be understood, the second instance of “a heel to toe axis…of the sole” is being interpreted as “the heel to toe axis of the sole”.
Regarding claim 9, Applicant recites the limitations “the upper shearing structure” and “the lower shearing structure” (twice each), each of which lack antecedent basis in the claims. Examiner notes that claim 9 depends directly from independent claim 1, while dependent claim 4 is the claim that first positively recites “an upper shearing structure” and “a lower shearing structure”. Should claim 9 depend from claim 4? Correction is required.
Regarding claim 10, Applicant recites “wherein the at least one upper protrusion is at least partially accommodated in the at least one lower recess, [and/or] wherein the one or more lower protrusions are at least partially accommodated in the at least one upper recess”. At this point in the claim language, it has not been definitively established that there are both (i) upper protrusion(s) and lower protrusion(s), and (ii) upper recess(es) and lower recess(es), giving importance to the term “and/or” being used in claim 9, from which claim 10 depends, which indicates that the “or” part of “and/or” would result in only upper protrusion(s) and lower recess(es), or only upper recess(es) and lower protrusion(s). Correction is required. Examiner suggests adding a clarifying statement to each limitation, such as “if the upper shearing structure comprises the at least one upper protrusion and the lower shearing structure comprises the at least one lower recess, then the at least one upper protrusion is at least partially accommodated in the at least one lower recess; and if the lower shearing structure comprises the at least one lower protrusion and the upper shearing structure comprises the upper recesses, then the at least one lower protrusion is at least partially accommodated in the upper recesses. The same issue is present in claims 11-17, all of which depend from claim 9, all of which are likewise indefinite. Examiner notes there are several potential remedies to clarify this subject matter, including the above suggestion. The claims, as they currently are recited, will be interpreted as best as can be understood when applying any prior art against them.
Regarding claim 15, Applicant recites “wherein the at least one upper protrusion [and/or] the at least one lower protrusion have a shape as seen in a horizontal plane of the sole comprising at least one of a line segment defined by a mathematical function”. This language is unclear. The phrase “at least one of” implies there would be multiple elements listed thereafter, but only one element (“a line segment defined by a mathematical function”) is recited. Also, the metes and bounds of what “defined by a mathematical function” are unclear, with respect to the shape of the line segment. Correction is required. For purposes of examination, the claim will be interpreted as best as can be understood when applying any prior art thereagainst.
Regarding claim 16, Applicant recites “wherein the at least one upper protrusion [and/or] the at least one lower protrusion comprise one or more side surface, the normal of which being substantially parallel to a horizontal plane of the sole, the side surfaces being angled with respect to a medial to lateral axis of the sole”. First, it is unclear as to what “the normal of which” is in reference. Should this recite “the normal of the one or more side surfaces”? Second, the phrase “the side surfaces” lacks clear antecedent basis because “one or more side surface” implies there may be only one side surface (i.e. “the side surfaces” references multiple side surfaces). Correction is required. For purposes of examination, the claim will be interpreted as best as can be understood when applying any prior art thereagainst.
Regarding claim 17, Applicant recites “a maximum height perpendicular to a horizontal plane of the sole of at least 2 mm”. This language is confusing because it applies a “maximum” value to a height dimension, but leaves the upper limit of the height dimension open-ended by reciting “at least 2 mm”. It is unclear what the upper boundary actually is (giving importance to “maximum”), since “at least 2 mm” appears to actually be establishing a minimum height. Correction is required.
Regarding claim 18, Applicant recites “further comprising a sole plate provided between the upper midsole layer and the lower midsole layer configured to control relative the movement between the upper midsole layer and the lower midsole layer” (emphasis added). The emphasized text is unclear, as it appears words are either superfluous, missing, or misplaced. Correction is required. For purposes of examination, the language is being interpreted as “further comprising a sole plate provided between the upper midsole layer and the lower midsole layer configured to control the relative movement between the upper midsole layer and the lower midsole layer”.
An effort has been made to identify all indefinite language with the pending claims. However, since the claims are replete with indefinite language (in particular, claims 9-17, with respect to the stacked “and/or” limitations), Examiner notes the above listing of 35 U.S.C. § 112 rejections may not be conclusive and Applicant is required to review every claim for compliance to 35 U.S.C. § 112(b) so as to facilitate a clear understanding of the claimed invention and proper application of the prior art.
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 1-6 and 18-20 (claims 2 and 18 as best as can be understood) are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oda et al. (hereinafter “Oda”) (US 2018/0255870).
Regarding independent claim 1, Oda discloses a sole (see the sole in Figs. 1 and 3) for a shoe (the sole is used in shoe #S (¶ 0040); Examiner notes that the phrase “for a shoe” is a statement of intended use and no completed shoe is required by the claim), the sole comprising: a midsole (#3) comprising an upper midsole layer (top thin plate #11 is an upper midsole layer) and a lower midsole layer (midsole body #4 is a lower midsole layer positioned beneath top thin plate #11), the upper midsole layer and the lower midsole layer being at least partially distinct from one another (top thin plate #11 and midsole body #4 are distinct structures (see Fig. 3)); and a shearing structure, arranged in the midsole (bottom thin plate #11 (Fig. 3) is a shearing structure, inasmuch as the shearing structure has been structurally defined in the claim); wherein the shearing structure is configured to allow a relative movement between the upper midsole layer and the lower midsole layer (¶ 0053 discloses that the front and back clearances #21/22 enable the second buffering member #10 (which is what is constituted by both thin plates #11) to move relatively in the longitudinal direction within the second receiving portion #7 defined in the midsole body #4; thin plates #11 are unaffixed to each other and can move independently and relatively in the longitudinal direction of the second receiving portion # 7, and may further include a lubricant surface treatment to be rendered further movable with respect to each other and to the midsole body #4 (¶ 0054); Examiner notes the emphasized/italicized language does not further structurally define the claimed invention in any patentably-distinguishing sense).
Regarding claim 2, Oda discloses that the relative movement between the upper midsole layer and lower midsole layer is in a plane defined by a medial to lateral axis of the sole and a heel to toe axis of the sole (¶ 0054 discloses that the relative movement is in the longitudinal direction), wherein the relative movement between the upper midsole layer and lower midsole layer is substantially parallel to [the] heel to toe axis of the sole (as depicted in Fig. 3, the relative movement would be at least substantially parallel to the longitudinal heel-to-toe axis of the sole, due to the presence of the front and back clearances #21/22).
Regarding claim 3, Oda discloses that the shearing structure is configured to allow the relative movement between the upper midsole layer and the lower midsole layer in at least one of a forefoot portion of the midsole, a midfoot portion of the midsole, a rearfoot portion of the midsole, a lateral portion of the midsole and a medial portion of the midsole (see annotated Fig. 1 below, arbitrary lateral and medial “portions” also exist generally on the left and right halves of the sole (although unlabeled below); 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); the identified forefoot, midfoot and rearfoot portions are merely exemplary and their boundaries could be drawn elsewhere, given the breadth of the term “portion” with no further claim language that explicitly defines their boundaries).
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Regarding claim 4, Oda discloses that the shearing structure comprises an upper shearing structure on the upper midsole layer and a lower shearing structure on the lower midsole layer (¶ 0059 discloses that there can be “two or more” thin plates #11; with the presence of a third thin plate in between the top thin plate #11 (i.e. upper midsole layer) and the midsole body #4 (i.e. lower midsole layer), there would further be lower shearing structure (i.e. the third thin plate which would be positioned on the bottom of the stack of thin plates, for purposes of addressing this claim language) on the midsole body #4 (i.e. lower midsole layer) and an upper shearing structure (existing bottom thin plate #11, which would become the middle thin plate with the addition of the aforementioned third thin plate) on the upper midsole layer (i.e. top thin plate)), wherein the upper shearing structure and the lower shearing structure are facing one another (the lower surface of the middle thin plate (i.e. upper shearing structure) would face the upper surface of the third/bottom thin plate (i.e. lower shearing structure)).
Regarding claim 5, Oda discloses that the upper shearing structure and the lower shearing structure are at least partially engaged with one another (they would be in sliding contact with one another in the stack of thin plates #11).
Regarding claim 6, Oda discloses that the upper shearing structure and the lower shearing structure are substantially shaped in correspondence to one another (see Figs. 1 and 3, which indicate that they are at least substantially shaped in correspondence to one another).
Regarding claim 18, Oda discloses that the sole further comprises a sole plate provided between the upper midsole layer and the lower midsole layer configured to control relative the movement between the upper midsole layer and the lower midsole layer (¶ 0059 discloses that there can be “two or more” thin plates #11; with the presence of a third thin plate in between the top thin plate #11 (i.e. upper midsole layer) and the midsole body #4 (i.e. lower midsole layer), there would further be a sole plate provided between the upper and lower midsole layers, wherein the third thin plate would be capable of controlling relative movement between those layers, inasmuch as the functional phrase “control relative the movement” has been defined with respect to any nexus with the structural limitations of the claim).
Regarding independent claim 19, Oda discloses a sole (see the sole in Figs. 1 and 3) for a shoe (the sole is used in shoe #S (¶ 0040); Examiner notes that the phrase “for a shoe” is a statement of intended use and no completed shoe is required by the claim), the sole comprising: a midsole (#3) comprising an upper midsole layer (top thin plate #11 is an upper midsole layer) and a lower midsole layer (midsole body #4 is a lower midsole layer positioned beneath top thin plate #11), the upper midsole layer and the lower midsole layer being integrally formed (the top thin plate #11 is an integral formation and the midsole body #4 is an integral formation; Examiner notes that the claim language does not require that the upper and lower midsole layers are integrally formed “with one another”); and a shearing structure, arranged in a midfoot portion of the midsole [and/or] a forefoot portion of the midsole (bottom thin plate #11 (Fig. 3) is a shearing structure, inasmuch as the shearing structure has been structurally defined in the claim; see annotated Fig. 1 above, which shows that the bottom thin plate would have part of its arrangement in an arbitrary midfoot portion of the midsole); wherein the shearing structure is configured to allow a relative movement between the upper midsole layer and the lower midsole layer (¶ 0053 discloses that the front and back clearances #21/22 enable the second buffering member #10 (which is what is constituted by both thin plates #11) to move relatively in the longitudinal direction within the second receiving portion #7 defined in the midsole body #4; thin plates #11 are unaffixed to each other and can move independently and relatively in the longitudinal direction of the second receiving portion # 7, and may further include a lubricant surface treatment to be rendered further movable with respect to each other and to the midsole body #4 (¶ 0054); Examiner notes the emphasized/italicized language does not further structurally define the claimed invention in any patentably-distinguishing sense).
Regarding independent claim 20, Oda discloses a method for manufacturing a sole for a shoe, the method comprising: providing a midsole (#3) comprising an upper midsole layer (top thin plate #11 is an upper midsole layer) and a lower midsole layer (midsole body #4 is a lower midsole layer positioned beneath top thin plate #11), the upper midsole layer and the lower midsole layer being at least partially distinct from one another (top thin plate #11 and midsole body #4 are distinct structures (see Fig. 3); inasmuch as the method limitations require, all of this structure is “provided”; see the 35 U.S.C. 102(a)(1) rejection of independent claim 1 above, which addresses the structural limitations); providing a shearing structure, arranged in the midsole (inasmuch as the method limitations require, the shearing structure (i.e. bottom thin plate #11) is “provided”; see the 35 U.S.C. 102(a)(1) rejection of independent claim 1 above, which addresses the structural limitations); wherein the shearing structure is configured to allow a relative movement between the upper midsole layer and the lower midsole layer (¶ 0053 discloses that the front and back clearances #21/22 enable the second buffering member #10 (which is what is constituted by both thin plates #11) to move relatively in the longitudinal direction within the second receiving portion #7 defined in the midsole body #4; thin plates #11 are unaffixed to each other and can move independently and relatively in the longitudinal direction of the second receiving portion # 7, and may further include a lubricant surface treatment to be rendered further movable with respect to each other and to the midsole body #4 (¶ 0054); Examiner notes the emphasized/italicized language does not further structurally define the claimed invention in any patentably-distinguishing sense).
Claims 1-11, 13-16, 19 and 20 (claims 2, 9-11 and 13-16 as best as can be understood) are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gheorghian et al. (hereinafter “Gheorghian”) (US 2012/0210606).
Regarding independent claim 1, Gheorghian discloses a sole (sole assembly #18) for a shoe (sole assembly #18 is used in a shoe #10 (Fig. 1); Examiner notes that the phrase “for a shoe” is a statement of intended use and no completed shoe is required by the claim), the sole comprising: a midsole (midsole assembly #22) comprising an upper midsole layer (first member #24) and a lower midsole layer (second member #26), the upper midsole layer and the lower midsole layer being at least partially distinct from one another (see Fig. 2, which shows #24 and #26 exploded from one another (i.e. distinct structures)); and a shearing structure, arranged in the midsole (ribs #30 and ribs #44, together, define a shearing structure in the midsole #22); wherein the shearing structure is configured to allow a relative movement between the upper midsole layer and the lower midsole layer (¶ 0046 discloses that first and second members #24 and #26 can have different respective resistances to resilient deformation, which indicates that when a force is applied to the sole, one of the members can have a movement that is different relative to the other member’s movement; ¶ 0046 provides an example wherein the second member #26 can be more resistant to resilient deformation than the first member #24 (i.e. stiffer) and less easily compressible, which would enable the members to have a movement differently relative to one another; Examiner notes that the type of relative movement has not been specifically defined in claim 1; Examiner notes the emphasized/italicized language does not further structurally define the claimed invention in any patentably-distinguishing sense).
Regarding claim 2, Gheorghian discloses that the relative movement between the upper midsole layer and lower midsole layer is in a plane defined by a medial to lateral axis of the sole and a heel to toe axis of the sole (¶ 0023 discloses that the first and second members #24 and #26 can be made of resiliently flexible material, such as foam, and as noted above, that the members can be made of different materials than one another wherein one is stiffer than the other; since foam is compressible isotropically, the relative movement direction between the first and second members (i.e. upper and lower midsole layers) would be capable of being in a plane defined by the medial-lateral axis and the heel-toe axis), wherein the relative movement between the upper midsole layer and lower midsole layer is substantially parallel to [the] heel to toe axis of the sole (the isotropic behavior of the foam would enable the relative movement direction to be at least substantially parallel with the heel-toe axis direction, inasmuch as the claim has defined).
Regarding claim 3, Gheorghian discloses that the shearing structure is configured to allow the relative movement between the upper midsole layer and the lower midsole layer in at least one of a forefoot portion of the midsole, a midfoot portion of the midsole, a rearfoot portion of the midsole, a lateral portion of the midsole and a medial portion of the midsole (see Fig. 2, wherein there are ribs #30 and #44 throughout the entire length and width of the midsole #22, which include arbitrary forefoot, midfoot, rearfoot, medial and lateral portions of the midsole; 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); the identified forefoot, midfoot and rearfoot portions are merely exemplary and their boundaries could be drawn elsewhere, given the breadth of the term “portion” with no further claim language that explicitly defines their boundaries; the relative movement would be allowed where the ribs are located, which in Fig. 2 is throughout the entire length and width, given the behavior of the foam that forms the members #24/26 and their ribs #30/44).
Regarding claim 4, Gheorghian discloses that the shearing structure comprises an upper shearing structure on the upper midsole layer and a lower shearing structure on the lower midsole layer (ribs #30 are an upper shearing structure on the first member #24 (i.e. upper midsole layer); ribs #44 are a lower shearing structure on the second member #26 (i.e. lower midsole layer)), wherein the upper shearing structure and the lower shearing structure are facing one another (see Fig. 2).
Regarding claim 5, Gheorghian discloses that the upper shearing structure and the lower shearing structure are at least partially engaged with one another (see Fig. 1; ¶ 0044 discloses that the first and second members #24/26 can be held together through surface friction).
Regarding claim 6, Gheorghian discloses that the upper shearing structure and the lower shearing structure are substantially shaped in correspondence to one another (see Figs. 1 and 2; the ribs #30/44 are at least substantially shaped in correspondence to one another since they fit together with a surface friction fitting, as noted above).
Regarding claim 7, Gheorghian discloses that the upper shearing structure and the lower shearing structure are engaged with one another via a form-fit connection (see Figs. 1 and 2; the ribs #30/44 fit together with a surface friction fitting (i.e. a type of form-fit connection), as noted above).
Regarding claim 8, Gheorghian discloses that the upper shearing structure is integrally formed with the upper midsole layer (¶ 0027 discloses that ribs #30 can be integrally coupled to the base #28, which is part of the first member #24 (i.e. upper midsole layer)) and the lower shearing structure is integrally formed with the lower midsole layer (¶ 0036 discloses that ribs #44 can be integrally coupled to the base #40, which is part of the second member #26 (i.e. lower midsole layer)).
Regarding claim 9, Gheorghian discloses that the upper shearing structure comprises at least one upper protrusion (any one of ribs #30 is at least one upper protrusion (see Fig. 2)) and the lower shearing structure comprises at least one lower recess (any one of grooves #48 is at least one lower recess (see Fig. 2)), [and/or] wherein the lower shearing structure comprises at least one lower protrusions (any one of ribs #44 is at least one lower protrusion (see Fig. 2)) and the upper shearing structure comprises upper recesses (any two of grooves #38 constitute upper recesses (see Fig. 2)).
Regarding claim 10, Gheorghian discloses that the at least one upper protrusion is at least partially accommodated in the at least one lower recess (see Fig. 1), [and/or] wherein the one or more lower protrusions are at least partially accommodated in the at least one upper recess (see Fig. 1).
Regarding claim 11, Gheorghian discloses that the at least one upper protrusion [and/or] the one or more lower protrusion are spaced apart from one another as seen in a horizontal plane of the sole (Examiner notes that any one of the ribs #30 constitutes “at least one upper protrusion” and any one of the ribs #44 constitutes “at least one lower protrusion”; Figs. 1 and 2 show that at least one rib #30 is spaced apart horizontally from at least one rib #44).
Regarding claim 13, Gheorghian discloses that the at least one upper protrusion and the at least one upper recess are arranged in an alternating manner (Examiner notes that any one of the ribs #30 constitutes “at least one upper protrusion” and any one of the grooves #38 constitutes “at least one upper recess”; Figs. 1 and 2 show that at least one rib #30 alternates with at least one groove #38).
Regarding claim 14, Gheorghian discloses that the at least one upper protrusion [and/or] the at least one lower protrusion have an elongated shape (see Figs. 1 and 2).
Regarding claim 15, Gheorghian discloses that the at least one upper protrusion [and/or] the at least one lower protrusion have a shape as seen in a horizontal plane of the sole comprising at least one of a line segment defined by a mathematical function (as best as this limitation can be understood, the ribs have a shape of a line segment that can be mapped by at least some mathematical function).
Regarding claim 16, Gheorghian discloses that the at least one upper protrusion [and/or] the at least one lower protrusion comprise one or more side surface (see Figs. 1-4), the normal of which being substantially parallel to a horizontal plane of the sole (see Fig. 5; Examiner notes that a line normal to the side surface in Fig. 5 is at least substantially parallel to a horizontal plane of the sole), the side surfaces being angled with respect to a medial to lateral axis of the sole (see Figs. 3 and 5, which show at least some angle for the side surfaces relative to the medial-lateral axis; Examiner notes that the claim does not define any magnitude for the “angle”).
Regarding independent claim 19, Gheorghian discloses a sole (sole assembly #18) for a shoe (sole assembly #18 is used in a shoe #10 (Fig. 1); Examiner notes that the phrase “for a shoe” is a statement of intended use and no completed shoe is required by the claim), the sole comprising: a midsole (midsole assembly #22) comprising an upper midsole layer (first member #24) and a lower midsole layer (second member #26), the upper midsole layer and the lower midsole layer being integrally formed (first member #24 is an integral formation and second member #26 is an integral formation; Examiner notes that the claim language does not require that the upper and lower midsole layers are integrally formed “with one another”; nevertheless, Gheorghian discloses that first and second members #24/26 can be formed together in a dual injection-molding method, which would render them integrally molded with one another); and a shearing structure, arranged in a midfoot portion of the midsole [and/or] a forefoot portion of the midsole (ribs #30 and ribs #44, together, define a shearing structure in the midsole #22; see Figs. 1-2, which show arbitrary midfoot and forefoot portions of the sole, the midfoot and forefoot portions having ribs #30/44 therein); wherein the shearing structure is configured to allow a relative movement between the upper midsole layer and the lower midsole layer (¶ 0046 discloses that first and second members #24 and #26 can have different respective resistances to resilient deformation, which indicates that when a force is applied to the sole, one of the members can have a movement that is different relative to the other member’s movement; ¶ 0046 provides an example wherein the second member #26 can be more resistant to resilient deformation than the first member #24 (i.e. stiffer) and less easily compressible, which would enable the members to have a movement differently relative to one another; Examiner notes that the type of relative movement has not been specifically defined in claim 19; Examiner notes the emphasized/italicized language does not further structurally define the claimed invention in any patentably-distinguishing sense).
Regarding independent claim 20, Gheorghian discloses a method for manufacturing a sole for a shoe, the method comprising: providing a midsole (midsole assembly #22) comprising an upper midsole layer (first member #24) and a lower midsole layer (second member #26), the upper midsole layer and the lower midsole layer being at least partially distinct from one another (see Fig. 2, which shows #24 and #26 exploded from one another (i.e. distinct structures); inasmuch as the method limitations require, all of this structure is “provided”; see the 35 U.S.C. 102(a)(1) rejection of independent claim 1 above, which addresses the structural limitations); providing a shearing structure, arranged in the midsole (ribs #30 and ribs #44, together, define a shearing structure in the midsole #22); wherein the shearing structure is configured to allow a relative movement between the upper midsole layer and the lower midsole layer (¶ 0046 discloses that first and second members #24 and #26 can have different respective resistances to resilient deformation, which indicates that when a force is applied to the sole, one of the members can have a movement that is different relative to the other member’s movement; ¶ 0046 provides an example wherein the second member #26 can be more resistant to resilient deformation than the first member #24 (i.e. stiffer) and less easily compressible, which would enable the members to have a movement differently relative to one another; Examiner notes that the type of relative movement has not been specifically defined in claim 20; Examiner notes the emphasized/italicized language does not further structurally define the claimed invention in any patentably-distinguishing sense).
Claim Rejections - 35 USC § 102 / 103
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.
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.
Claims 12 and 17, as best as can be understood, are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Gheorghian, as applied to claims 1 and 9 (and claim 11, regarding claim 12) above.
Regarding claim 12, Gheorghian discloses all the limitations of claims 1, 9 and 11, as set forth above. Gheorghian does not specify any dimensions (nor their magnitudes), and is therefore silent to specifying that the at least one upper protrusion and the at least one lower protrusion are spaced apart from one another as seen along a heel to toe axis of the sole, by at least 1 cm. However, Gheorghian at least suggests that one of the ribs #30 (i.e. at least one upper protrusion) and one of the ribs #44 (i.e. at least one lower protrusion) would reasonably be expected to be spaced apart from one another along the heel-toe axis by at least 1 cm because the front-most rib #30 is located at the toe end of the sole, and the rear-most rib #44 is located at the heel end of the sole, and one of ordinary skill in the art would expect a sole to be roughly anywhere from 10 cm to 30 cm long, depending on the size of the wearer’s foot. Even at the lower end of this general range, where the sole would be 10 cm in longitudinal length (roughly the length of a sole on a toddler’s shoe size), the front-most rib #30 at the toe end would be well over 1 cm spaced apart from the rear-most rib #44 at the heel end. Therefore, it would at least have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have at least one upper protrusion be at least 1 cm spaced apart from at least one lower protrusion in order to provide the shoe design of Gheorghian in a size large enough to be wearable by a normal human foot, and further since 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(II)(A).
Regarding claim 17, Gheorghian discloses all the limitations of claims 1 and 9, as set forth above. Gheorghian does not specify any dimensions (nor their magnitudes), and is therefore silent to specifying that the at least one upper protrusion [and/or] the one or more lower protrusion have a maximum height perpendicular to a horizontal plane of the sole of at least 2 mm. However, Gheorghian at least suggests that either of the ribs #30/44 (i.e. the at least one upper protrusion and/or the at least one lower protrusion) would have a maximum height perpendicular to a horizontal plane of the sole of at least 2 mm, when viewing Figs. 1-2, because the ribs #30 and #44 both extend a substantial height percentage of the sole itself. In order for the visible ribs #30/44 to not have a height of at least 2 mm, the sole would have to be extremely thin to the point where the interlocking ribs would not be able to serve their purpose of providing cushioning for the user. It would at least have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art for the ribs #30/44 to have a height of at least 2 mm in order to provide a sole that would have an overall thickness that would be able to provide adequate cushioning for the user’s foot, whereas the depicted shoe in Fig. 1, given the illustrated scale, would be too small to be worn by a typical human foot if the ribs were not at least 2 mm in height, and further since 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(II)(A).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All art cited on the PTO-892 and not relied upon in an art rejection above is deemed relevant in the field of footwear soles with layers that are capable of movement relative to one another.
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/JAMESON D COLLIER/ Primary Examiner, Art Unit 3732