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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/29/2026 has been entered.
Response to Amendment
In accordance with Applicant’s amendment filed 1/29/2026, claims 1, 11, 15 are amended. Claims 21-23 are new. Claims 1-2, 4, 6-11, 13, 15-17, 19, 21-23 are presented for examination on the merits.
Applicant’s amendment has overcome the previously presented rejections under 35 USC 112(b), and it has introduced new ones.
Response to Arguments
Applicant's arguments filed 1/29/2026 have been fully considered but they are not persuasive.
Regarding the 35 USC 103 rejections, Applicant argues that the currently relied upon references do not teach the newly added limitation “the groove is wave-shaped having plural local minima at a bottom portion of the heel counter structure, and a local maxima centered at an upper portion of the heel counter structure”. Examiner respectfully disagrees. Firstly, this limitation introduces issues under 35 USC 112(a) and 112(b), as described below, but as best understood by the Examiner, Beers teaches the newly added limitations, as shown in the annotated figure 3 below. The local maxima, as shown below, may be considered to be “centered at an upper portion” as it is located at the center of the upper portion (i.e., midway between the top of the upper portion and the bottom of the upper portion). Therefore, the Examiner maintains that the prior art reads on the claims.
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Applicant asserts that the dependent claims are allowable based on their dependency from the independent claims; however, as described in the arguments above and rejections below, the independent claims are not allowable over the prior art. The dependent claims remain rejected.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “a local maxima centered at an upper portion of the heel counter structure” (claims 1, 11, 15) must be shown or the feature(s) canceled from the claim(s). Examiner acknowledges that Applicant pointed to figure 12B as showing the claimed feature; however, the drawings are not clear in their depiction of any centering, as the only figures which depict the claimed embodiment (12A and 12B) are perspective drawings and there is no clear indication of where the “center” would be on those drawings, therefore it cannot be definitively concluded that the drawings support the newly added limitation “a local maxima centered at an upper portion of the heel counter structure”.
No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 4, 6-11, 13, 15-17, 19, 21-23 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the claim recites “a local maxima centered at an upper portion of the heel counter structure”. There is insufficient support in the disclosure as originally filed for this limitation in the claim. The specification as originally filed is silent as to any centering or the particular location of the maxima/minima other than to say that the maxima are in a top portion of the heel counter structure and the minima are in a bottom portion of the heel counter structure. The drawings are not clear in their depiction of any centering, as the only figures which depict the claimed embodiment are perspective drawings and there is no clear indication of where the “center” would be on those drawings, therefore it cannot be definitively concluded that the drawings support the newly added limitation “a local maxima centered at an upper portion of the heel counter structure”.
Regarding claim 11, the claim recites “a local maxima centered at an upper portion of the heel counter structure”. There is insufficient support in the disclosure as originally filed for this limitation in the claim. The specification as originally filed is silent as to any centering or the particular location of the maxima/minima other than to say that the maxima are in a top portion of the heel counter structure and the minima are in a bottom portion of the heel counter structure. The drawings are not clear in their depiction of any centering, as the only figures which depict the claimed embodiment are perspective drawings and there is no clear indication of where the “center” would be on those drawings, therefore it cannot be definitively concluded that the drawings support the newly added limitation “a local maxima centered at an upper portion of the heel counter structure”.
Regarding claim 15, the claim recites “a local maxima centered at an upper portion of the heel counter structure”. There is insufficient support in the disclosure as originally filed for this limitation in the claim. The specification as originally filed is silent as to any centering or the particular location of the maxima/minima other than to say that the maxima are in a top portion of the heel counter structure and the minima are in a bottom portion of the heel counter structure. The drawings are not clear in their depiction of any centering, as the only figures which depict the claimed embodiment are perspective drawings and there is no clear indication of where the “center” would be on those drawings, therefore it cannot be definitively concluded that the drawings support the newly added limitation “a local maxima centered at an upper portion of the heel counter structure”.
The dependent claims inherit the deficiency by nature of dependency.
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 1-2, 4, 6-11, 13, 15-17, 19, 21-23 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 1, the claim recites the limitation “a local maxima centered at an upper portion of the heel counter structure”. This limitation is unclear because it is unclear what the term “centered” means in the context of the claim because the claim does not define what the local maxima is supposed to be centered in reference to. In order to be “centered”, there needs to be two points of reference between which the local maxima is located. Given that the claim currently recites that the local maxima is centered “at an upper portion of the heel counter structure”, the limitation has been interpreted as requiring the local maxima to be centered in a vertical direction within the upper portion (i.e., centered between the top of the upper portion and the bottom of the upper portion).
Regarding claim 4, the claim recites the limitation “wherein the groove is a continuous groove with plural local minima at the bottom portion of the heel counter structure and plural local maxima a the upper portion of the heel counter structure”. This limitation is unclear in light of the amendment to claim 1, which now recites “the groove is wave-shaped having plural local minima at a bottom portion of the heel counter structure, and a local maxima centered at an upper portion of the heel counter structure”. It is not clear whether the recitation of “plural local minima” and “plural local maxima” in claim 4 is meant to be in addition to the already recited “plural local minima” and “local maxima” or if these are referring to the same structures as recited in claim 1. For the purposes of examination, the claim has been interpreted as now requiring plural local maxima (i.e., more than one), rather than just one as recited in claim 1, and the same plural local minima as recited in claim 1.
Regarding claim 11, the claim recites the limitation “a local maxima centered at an upper portion of the heel counter structure”. This limitation is unclear because it is unclear what the term “centered” means in the context of the claim because the claim does not define what the local maxima is supposed to be centered in reference to. In order to be “centered”, there needs to be two points of reference between which the local maxima is located. Given that the claim currently recites that the local maxima is centered “at an upper portion of the heel counter structure”, the limitation has been interpreted as requiring the local maxima to be centered in a vertical direction within the upper portion (i.e., centered between the top of the upper portion and the bottom of the upper portion).
Regarding claim 13, the claim recites the limitation “wherein the groove is a continuous groove with plural local minima at the bottom portion of the heel counter structure and plural local maxima a the upper portion of the heel counter structure”. This limitation is unclear in light of the amendment to claim 11, which now recites “the groove is wave-shaped having plural local minima at a bottom portion of the heel counter structure, and a local maxima centered at an upper portion of the heel counter structure”. It is not clear whether the recitation of “plural local minima” and “plural local maxima” in claim 13 is meant to be in addition to the already recited “plural local minima” and “local maxima” or if these are referring to the same structures as recited in claim 11. For the purposes of examination, the claim has been interpreted as now requiring plural local maxima (i.e., more than one), rather than just one as recited in claim 11, and the same plural local minima as recited in claim 11.
Regarding claim 15, the claim recites the limitation “a local maxima centered at an upper portion of the heel counter structure”. This limitation is unclear because it is unclear what the term “centered” means in the context of the claim because the claim does not define what the local maxima is supposed to be centered in reference to. In order to be “centered”, there needs to be two points of reference between which the local maxima is located. Given that the claim currently recites that the local maxima is centered “at an upper portion of the heel counter structure”, the limitation has been interpreted as requiring the local maxima to be centered in a vertical direction within the upper portion (i.e., centered between the top of the upper portion and the bottom of the upper portion).
Regarding claim 19, the claim recites the limitation “wherein the groove is a continuous groove with plural local minima at the bottom portion of the heel counter structure and plural local maxima a the upper portion of the heel counter structure”. This limitation is unclear in light of the amendment to claim 15, which now recites “the groove is wave-shaped having plural local minima at a bottom portion of the heel counter structure, and a local maxima centered at an upper portion of the heel counter structure”. It is not clear whether the recitation of “plural local minima” and “plural local maxima” in claim 19 is meant to be in addition to the already recited “plural local minima” and “local maxima” or if these are referring to the same structures as recited in claim 15. For the purposes of examination, the claim has been interpreted as now requiring plural local maxima (i.e., more than one), rather than just one as recited in claim 15, and the same plural local minima as recited in claim 15.
The dependent claims inherit the deficiency by nature of dependency.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-2, 4, 6-9, 11, 13, 15-16, 19, 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clarke (US 2005/0188562) in view of Beers (US 10568385).
Regarding claim 1, as best understood by Examiner, Clarke discloses: A footwear structure comprising: an outer cage component that includes: (i) an outsole portion (outsole 16), and (ii) an upper portion (cage 12), the outer cage component defining an interior chamber (see figure 15 which shows the cage 12 and outsole 16 form an interior chamber into which the user’s foot can be placed); an inner upper component (slipper 14) that defines a foot-receiving chamber including a bottom surface, a heel-containing region, a midfoot-containing region, and a forefoot-containing region (see figure 18 which shows the how the slipper 14 has a bottom surface, heel-containing region, midfoot-containing region, and forefoot-containing region); and a foot support component (insole 18) releasably engaged with the outer cage component and the inner upper component to form the footwear structure (see figure 18 which is “a cross section of shoe 10 in one fully-assembled configuration” which includes the outer cage, inner upper component, and footwear component (paragraph 46); paragraph 43 also states “various combinations of cage 12, outsole 16, slipper 14 and insole 18 provide a wearer with footwear suitable for different circumstances” which indicates that they are releasably engaged with each other as the user can reconfigure the parts to achieve different combinations), with the inner upper component fitting inside the outer cage component (see figure 18), the foot support component comprising: a top surface for supporting an entire plantar surface of a wearer's foot (see figure 9 showing the top surface of the insole 18); a bottom surface (lower surface 38) opposite the top surface; and an integrally formed heel counter structure extending from the top surface at a heel region of the foot support component, the heel counter structure including a sidewall defined by a lateral sidewall, a medial sidewall, and a rear sidewall formed between the lateral sidewall and the medial sidewall (see figure 9 annotated below), wherein the foot support component is formed as a unitary, one-piece construction (see figure 9; the insole 18 is a unitary, one-piece construction).
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Annotated figure 9 of Clarke showing the lateral, medial, and rear sidewall on the insole
Clarke does not explicitly disclose: the heel counter structure further including a void structure formed in the sidewall, the void structure defined by one or more of openings, voids, or grooves, wherein the void structure includes a groove that extends from a portion of the medial sidewall through the rear sidewall to a portion of the lateral sidewall, wherein the groove is wave-shaped having plural local minima at a bottom portion of the heel counter structure, and a local maxima centered at an upper portion of the heel counter structure.
However, Beers teaches a heel counter structure (10) for footwear including a void structure formed in the sidewall, the void structure defined by one or more of openings, voids, or grooves, wherein the void structure includes a groove that extends from a portion of the medial sidewall through the rear sidewall to a portion of the lateral sidewall, wherein the groove is wave-shaped having plural local minima at a bottom portion of the heel counter structure, and a local maxima centered at an upper portion of the heel counter structure (see annotated figure 3 below showing the groove is wave shaped with plural local minima at a bottom portion and a local maxima centered at an upper portion; see also figure 1 showing in perspective that the groove extends from the medial sidewall, through the rear sidewall, and to the lateral sidewall). Beers further teaches “[the heel spring device is] secured to the sole layer 34 such as by bonding with adhesive, thermal bonding, or otherwise” (column 15, lines 56-58).
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Beers teaches analogous art to the instant application in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to replace the heel counter structure of Clarke with the heel counter structure of Beers in order to “retain a wearer's heel in position atop a heel portion of the sole structure, preventing medial or lateral displacement during use” (Beers, column 16, lines 16-20) and to “[allow] the foot 46 to enter into a foot-receiving cavity 47 formed by the upper 38 without the use of hands or other tools” (Beers, column 16, lines 35-37). This would help the user put on the slipper of Clarke in a hands-free manner, making it easier to slip on the shoe. Examiner notes that, as modified, the heel counter structure of Beers would be bonded to the insole of Clarke, as Beers teaches that the heel counter structure is bonded to a sole layer (see Beers column 15, lines 56-58 and column 20, lines 2-3), and further that this means the heel counter structure is a unitary single piece with the foot support component (insole) as constructed because the heel counter and foot support component are bonded together to form one final piece.
Regarding claim 2, Clarke as modified discloses: The footwear structure according to claim 1, wherein the foot support component is formed as a unitary, one-piece construction (as modified, the foot support component is a unitary construction in the final product and constitutes a single piece).
Regarding claim 4, as best understood by Examiner, Clarke as modified discloses: The footwear structure according to claim 2, wherein the groove is a continuous groove with plural local minima at the bottom portion of the heel counter structure and plural local maxima at the upper portion of the heel counter structure (see annotated figure 3 of Beers provided below showing the plural local minima and maxima).
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Regarding claim 6, Clarke as modified discloses: The footwear structure according to claim 1, wherein the bottom surface of the foot support component includes a plurality of cleat inserts (Clarke, protrusions 36).
Regarding claim 7, Clarke as modified discloses: The footwear structure according to claim 6, wherein one or more of the plurality of cleat inserts is configured to extend into a corresponding one of a plurality of recesses (Clarke, depressions 34) defined in the outsole portion of the outer cage component (“distributed across upper surface 26 are multiple depressions 34. Depressions 34 correspond to protrusions 36 on lower surface 38 (FIG. 11) of insole 18. In one configuration, insole 18 nests within the region of outsole 16 formed by upper surface 26 and lip 32. In this configuration, protrusions 36 fit within depressions 34”, Clarke, paragraph 40; see figures 18 and 18A).
Regarding claim 8, Clarke as modified discloses: The footwear structure according to claim 7, wherein the outsole portion includes a plurality of cleat shells (Clarke, lugs 20).
Regarding claim 9, Clarke as modified discloses: The footwear structure according to claim 8, wherein the interior chamber includes a footbed portion formed by an interior surface of the outsole portion (Clarke, upper surface 26), the footbed portion including the plurality of recesses (“distributed across upper surface 26 are multiple depressions 34” Clarke, paragraph 40).
Regarding claim 11, as best understood by Examiner, Clarke discloses: A foot support component (insole 18) configured to releasably engage with an outer cage component and an inner upper component to form an article of footwear (see figure 18 which is “a cross section of shoe 10 in one fully-assembled configuration” which includes the outer cage, inner upper component, and footwear component (paragraph 46); paragraph 43 also states “various combinations of cage 12, outsole 16, slipper 14 and insole 18 provide a wearer with footwear suitable for different circumstances” which indicates that they are releasably engaged with each other as the user can reconfigure the parts to achieve different combinations), the outer cage component including an outsole portion (outsole 16) and an upper portion (cage 12), with the inner upper component fitting inside the outer cage component (see figure 18), the foot support component comprising: a top surface for supporting an entire plantar surface of a wearer's foot (see figure 9 showing the top surface of insole 18); a bottom surface (lower surface 38) opposite the top surface; and an integrally formed heel counter structure extending from the top surface at a heel region of the foot support component, the heel counter structure including a sidewall having a lateral sidewall, a medial sidewall, and a rear sidewall extending between the lateral sidewall and the medial sidewall (see figure 9 annotated with the 35 USC 103 rejection of claim 1 above).
Clarke does not explicitly disclose: the heel counter structure further including a void structure formed in the sidewall, the void structure defined by one or more of openings, voids, or grooves, wherein the void structure includes a groove that extends from a portion of the medial sidewall through the rear sidewall to a portion of the lateral sidewall, wherein the groove is wave-shaped having plural local minima at a bottom portion of the heel counter structure, and a local maxima centered at an upper portion of the heel counter structure.
However, Beers teaches a heel counter structure (10) for footwear including a void structure formed in the sidewall, the void structure defined by one or more of openings, voids, or grooves, wherein the void structure includes a groove that extends from a portion of the medial sidewall through the rear sidewall to a portion of the lateral sidewall, wherein the groove is wave-shaped having plural local minima at a bottom portion of the heel counter structure, and a local maxima centered at an upper portion of the heel counter structure (see annotated figure 3 provide with the 35 USC 103 rejection of claim 1 above showing the groove is wave shaped with plural local minima at a bottom portion and a local maxima centered at an upper portion; see also figure 1 showing in perspective that the groove extends from the medial sidewall, through the rear sidewall, and to the lateral sidewall). Beers further teaches “[the heel spring device is] secured to the sole layer 34 such as by bonding with adhesive, thermal bonding, or otherwise” (column 15, lines 56-58).
Beers teaches analogous art to the instant application in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to replace the heel counter structure of Clarke with the heel counter structure of Beers in order to “retain a wearer's heel in position atop a heel portion of the sole structure, preventing medial or lateral displacement during use” (Beers, column 16, lines 16-20) and to “[allow] the foot 46 to enter into a foot-receiving cavity 47 formed by the upper 38 without the use of hands or other tools” (Beers, column 16, lines 35-37). This would help the user put on the slipper of Clarke in a hands-free manner, making it easier to slip on the shoe. Examiner notes that, as modified, the heel counter structure of Beers would be bonded to the insole of Clarke, as Beers teaches that the heel counter structure is bonded to a sole layer (see Beers column 15, lines 56-58 and column 20, lines 2-3), and further that this means the heel counter structure is a unitary single piece with the foot support component (insole) as constructed because the heel counter and foot support component are bonded together to form one final piece.
Regarding claim 13, as best understood by Examiner, Clarke as modified discloses: The foot support component according to claim 11, wherein the groove is a continuous groove with plural local minima at the bottom portion of the heel counter structure and plural local maxima at the upper portion of the heel counter structure (see annotated figure 3 of Beers provided with the 35 USC 103 rejection of claim 4 above showing the plural local minima and maxima).
Regarding claim 15, as best understood by Examiner, Clarke discloses: A footwear structure comprising: an outer cage component that includes: (i) an outsole portion (outsole 16) including a plurality of cleat shells (lugs 20), and (ii) an upper portion (cage 12), the outer cage component defining an interior chamber (see figure 15 which shows the cage 12 and outsole 16 form an interior chamber into which the user’s foot can be placed); an inner upper component (slipper 14) that defines a foot-receiving chamber including a bottom surface, a heel-containing region, a midfoot-containing region, and a forefoot-containing region (see figure 18 which shows the how the slipper 14 has a bottom surface, heel-containing region, midfoot-containing region, and forefoot-containing region); and a foot support component (insole 18) releasably engaged with the outer cage component and the inner upper component to form the footwear structure (see figure 18 which is “a cross section of shoe 10 in one fully-assembled configuration” which includes the outer cage, inner upper component, and footwear component (paragraph 46); paragraph 43 also states “various combinations of cage 12, outsole 16, slipper 14 and insole 18 provide a wearer with footwear suitable for different circumstances” which indicates that they are releasably engaged with each other as the user can reconfigure the parts to achieve different combinations), with the inner upper component fitting inside the outer cage component (see figure 18), the foot support component comprising: a top surface for supporting an entire plantar surface of a wearer's foot (see figure 9 showing the top surface of the insole 18); a bottom surface (lower surface 38) opposite the top surface, wherein the bottom surface includes a plurality of cleat inserts (protrusions 36), wherein one or more of the plurality of cleat inserts is configured to extend into a corresponding one of a plurality of recesses (depressions 34) defined in the outsole portion of the outer cage component (“insole 18 nests within the region of outsole 16 formed by upper surface 26 and lip 32. In this configuration, protrusions 36 fit within depression 34” paragraph 40); and an integrally formed heel counter structure extending from the top surface at a heel region of the foot support component, the heel counter structure including a sidewall defined by a lateral sidewall, a medial sidewall, and a rear sidewall formed between the lateral sidewall and the medial sidewall (see annotated figure 9 provided with the 35 USC 103 rejection of claim 1 above).
Clarke does not explicitly disclose: the heel counter structure further including a void structure formed in the sidewall, the void structure defined by one or more of openings, voids, or grooves, wherein the void structure includes a groove that extends from a portion of the medial sidewall through the rear sidewall to a portion of the lateral sidewall, wherein the groove is wave-shaped having plural local minima at a bottom portion of the heel counter structure, and a local maxima centered at an upper portion of the heel counter structure.
However, Beers teaches a heel counter structure (10) for footwear including a void structure formed in the sidewall, the void structure defined by one or more of openings, voids, or grooves, wherein the void structure includes a groove that extends from a portion of the medial sidewall through the rear sidewall to a portion of the lateral sidewall, wherein the groove is wave-shaped having plural local minima at a bottom portion of the heel counter structure, and a local maxima centered at an upper portion of the heel counter structure (see annotated figure 3 provide with the 35 USC 103 rejection of claim 1 above showing the groove is wave shaped with plural local minima at a bottom portion and a local maxima centered at an upper portion; see also figure 1 showing in perspective that the groove extends from the medial sidewall, through the rear sidewall, and to the lateral sidewall). Beers further teaches “[the heel spring device is] secured to the sole layer 34 such as by bonding with adhesive, thermal bonding, or otherwise” (column 15, lines 56-58).
Beers teaches analogous art to the instant application in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to replace the heel counter structure of Clarke with the heel counter structure of Beers in order to “retain a wearer's heel in position atop a heel portion of the sole structure, preventing medial or lateral displacement during use” (Beers, column 16, lines 16-20) and to “[allow] the foot 46 to enter into a foot-receiving cavity 47 formed by the upper 38 without the use of hands or other tools” (Beers, column 16, lines 35-37). This would help the user put on the slipper of Clarke in a hands-free manner, making it easier to slip on the shoe. Examiner notes that, as modified, the heel counter structure of Beers would be bonded to the insole of Clarke, as Beers teaches that the heel counter structure is bonded to a sole layer (see Beers column 15, lines 56-58 and column 20, lines 2-3), and further that this means the heel counter structure is a unitary single piece with the foot support component (insole) as constructed because the heel counter and foot support component are bonded together to form one final piece.
Regarding claim 16, Clarke as modified discloses: The footwear structure according to claim 15, wherein the interior chamber includes a footbed portion formed by an interior surface of the outsole portion (Clarke, upper surface 26), the footbed portion including the plurality of recesses (“distributed across upper surface 26 are multiple depressions 34” Clarke, paragraph 40).
Regarding claim 19, as best understood by Examiner, Clarke as modified discloses: The footwear structure according to claim 16, wherein the groove is a continuous groove with plural local minima at the bottom portion of the heel counter structure and plural local maxima at the upper portion of the heel counter structure (see annotated figure 3 of Beers provided with the 35 USC 103 rejection of claim 4 above showing the plural local minima and maxima).
Regarding claim 21, Clarke as modified is silent as to the exact size of the groove, and therefore does not explicitly disclose: The footwear structure according to claim 1, wherein a surface area of the groove is 500 mm2 to 1,500 mm2.
However, it is well known and understood that different people have differently sized feet and therefore differently sized heels. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to make the groove as taught by Beers with a surface area within a range of 500 mm2 to 1,500 mm2 because the particular size of the groove is a result-effective variable that is dependent upon the particular size of a user’s heel. For example, a child’s shoe would have a different size than an adult man’s shoe. Further, Applicant has not disclosed any criticality for the claimed range, as the instant specification in paragraph 100 states multiple ranges for the surface area, so it also would have been an obvious matter of design choice to make the groove of Beers with a surface area within a range of 500 mm2 to 1,500 mm2 since such a modification would have involved a mere change in the size of a component, and a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). See MPEP 2144.04(IV)(A).
Regarding claim 22, Clarke as modified is silent as to the exact size of the groove, and therefore does not explicitly disclose: The footwear structure according to claim 11, wherein a surface area of the groove is 500 mm2 to 1,500 mm2.
However, it is well known and understood that different people have differently sized feet and therefore differently sized heels. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to make the groove as taught by Beers with a surface area within a range of 500 mm2 to 1,500 mm2 because the particular size of the groove is a result-effective variable that is dependent upon the particular size of a user’s heel. For example, a child’s shoe would have a different size than an adult man’s shoe. Further, Applicant has not disclosed any criticality for the claimed range, as the instant specification in paragraph 100 states multiple ranges for the surface area, so it also would have been an obvious matter of design choice to make the groove of Beers with a surface area within a range of 500 mm2 to 1,500 mm2 since such a modification would have involved a mere change in the size of a component, and a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). See MPEP 2144.04(IV)(A).
Regarding claim 23, Clarke as modified is silent as to the exact size of the groove, and therefore does not explicitly disclose: The footwear structure according to claim 15, wherein a surface area of the groove is 500 mm2 to 1,500 mm2.
However, it is well known and understood that different people have differently sized feet and therefore differently sized heels. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to make the groove as taught by Beers with a surface area within a range of 500 mm2 to 1,500 mm2 because the particular size of the groove is a result-effective variable that is dependent upon the particular size of a user’s heel. For example, a child’s shoe would have a different size than an adult man’s shoe. Further, Applicant has not disclosed any criticality for the claimed range, as the instant specification in paragraph 100 states multiple ranges for the surface area, so it also would have been an obvious matter of design choice to make the groove of Beers with a surface area within a range of 500 mm2 to 1,500 mm2 since such a modification would have involved a mere change in the size of a component, and a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). See MPEP 2144.04(IV)(A).
Claim(s) 10, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clarke/Beers and further in view of Einstein, Jr. (US 3538628), hereinafter “Einstein”.
Regarding claim 10, Clarke as modified discloses: The footwear structure according to claim 9, wherein one or more of the plurality of recesses extends into an interior of a respective one of the plurality of cleat shells (“depressions 34 are generally aligned with corresponding lugs 20 (as shown in FIGS. 18 and 18A)” Clarke, paragraph 46).
Clarke as modified does not explicitly disclose: wherein one or more of the plurality of recesses defines an undercut within an interior of one or more of the plurality of cleat shells.
However, Einstein teaches: a footbed portion formed by an interior surface of an outsole portion , the footbed portion including a plurality of recesses (apertures 42), wherein one or more of the plurality of recesses defines an undercut within an interior of the outsole portion (see figure 2, which shows how the apertures 42 include an undercut that accommodates the enlarged head portion 40; “the securement means 26 may comprise a plurality of stud members 38 having enlarged head portions 40 depending from the upper portion 30 with the core portion 34 of the lower portion 24 being provided with mating apertures 42” column 3, lines 38-43).
Einstein teaches analogous art to the instant application in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to make the protrusions and depressions of Clarke in the shape of the securing means (with the protrusions having an enlarged head portion and the depressions having a corresponding mating shape including an undercut portion) taught by Einstein so that “even during flexing of the assembly, the upper and lower portions would remain secured together” (Einstein, column 3, lines 46-47), which would lead to increased comfort and ease of use of the shoe since the insole and outsole would remain secured together even while walking. Examiner notes that the undercut portions would be located within the interior of the cleat shells (lugs 20 of Clarke) because that is where the depressions (34 of Clarke) were already located, and the modification does not change their location.
Regarding claim 17, Clarke as modified discloses: The footwear structure according to claim 16, wherein one or more of the plurality of recesses extends into an interior of a respective one of the plurality of cleat shells (“depressions 34 are generally aligned with corresponding lugs 20 (as shown in FIGS. 18 and 18A)” Clarke, paragraph 46).
Clarke as modified does not explicitly disclose: wherein one or more of the plurality of recesses defines an undercut within an interior of one or more of the plurality of cleat shells.
However, Einstein teaches: a footbed portion formed by an interior surface of an outsole portion , the footbed portion including a plurality of recesses (apertures 42), wherein one or more of the plurality of recesses defines an undercut within an interior of the outsole portion (see figure 2, which shows how the apertures 42 include an undercut that accommodates the enlarged head portion 40; “the securement means 26 may comprise a plurality of stud members 38 having enlarged head portions 40 depending from the upper portion 30 with the core portion 34 of the lower portion 24 being provided with mating apertures 42” column 3, lines 38-43).
Einstein teaches analogous art to the instant application in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to make the protrusions and depressions of Clarke in the shape of the securing means (with the protrusions having an enlarged head portion and the depressions having a corresponding mating shape including an undercut portion) taught by Einstein so that “even during flexing of the assembly, the upper and lower portions would remain secured together” (Einstein, column 3, lines 46-47), which would lead to increased comfort and ease of use of the shoe since the insole and outsole would remain secured together even while walking. Examiner notes that the undercut portions would be located within the interior of the cleat shells (lugs 20 of Clarke) because that is where the depressions (34 of Clarke) were already located, and the modification does not change their location.
Conclusion
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/BRIANNA T. DUCKWORTH/Examiner, Art Unit 3732
/PATRICK J. LYNCH/Primary Examiner, Art Unit 3732
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