DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Invention II, method claims 13-19, in the reply filed on 05/09/2026 is acknowledged.
Claims 1-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/09/2026.
Applicant's election with traverse of Species I, corresponding to the disclosed first embodiment of a shoe component in Figs. 1-4, and which Applicant identifies as corresponding to all method claims 13-19, in the reply filed on 05/09/2026 is acknowledged. The traversal is on the ground(s) that the elected invention is a method and the species correspond to the non-elected shoe component/product. This is not found persuasive because the method is for making the shoe component and therefore the disclosed species directed to the produced shoe components also translate to the method being examined. Elected Species I (Figs. 1-4 and corresponding description) relate to the first embodiment that is made by a corresponding method to have the disclosed structure. A method of making either of Species II or III with its different structure would be a different method.
The requirement is still deemed proper and is therefore made FINAL.
The examiner notes that Applicant identifies all method claims as corresponding to elected Species I; however, claim 14 corresponds to non-elected Species II and III (identified as corresponding to the second embodiment of Figs. 5-8, or third embodiment of Figs. 9-10, respectively), where the mesh layer is a yarn fabric (filed specification [0041], [0047]). Claims 18 and 19 depend from claim 14 and therefore also correspond to non-elected Species II and III.
Claims 14, 18-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/09/2026.
Claim Objections
Claim 17 is objected to because of the following informalities: claim 17 should presumably read “to correspond to the first surface” in line 3. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 17 is/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 17 recites the limitation "solidifying the outsole material to form base layer to engage the base layer with the first surface of the mesh layer…" in lines 4-5. The limitation is grammatically deficient and confusing at best as to whether “to form base layer” references “the base layer” introduced in claim 13 or a new base layer, as well as the intended meaning of “to form base layer to engage the base layer…”
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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) 13, 15, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chamblin, US 20190365027 A1, in view of Merlo, US 20170340061 A1 (provided in Applicant’s IDS), and Yang et al., US 20200331180 A1.
Regarding claim 13, Chamblin discloses a method of manufacturing a shoe component co-molded with a physically foamed midsole (forming an article of footwear 100 through a direct bottoming process, the midsole portion of sole 104 is foam composition 130, [0029]-[0030], direct attached to the upper 102 during the sole forming process, [0033], and the insert 142, [0038], Figs. 1-2), comprising:
Step S1: providing a composite outsole (outsole 138 bonded with insert 142, [0042], positioned in mold in Fig. 8), wherein an insert layer of the composite outsole has a first surface (bottom surface facing underlying layer 138, Fig. 8) and a second surface (top surface facing upward, Fig. 8) that face opposite directions (Fig. 8); the first surface has a first surface structure (Fig. 8); the second surface has a second surface structure (Fig. 8); a base layer of the composite outsole is engaged with the first surface by co-molding (underlying outsole layer 138 engaged with bottom surface of insert 142, Fig. 8; previously bonded by molding, [0042], e.g., by injection, Figs. 6-7, [0060]-[0064]);
Step S2: placing the composite outsole into a foaming mold and reserving a foaming space (Figs. 8-9); injecting a thermoplastic foaming fluid (polymeric foam composition 130 selected from thermoplastic materials, [0034]) into the foaming space of the foaming mold (injecting foam composition 130 to space between upper 102 and outsole, Fig. 9, [0066]); and
Step S3: foaming the thermoplastic foaming fluid to form a foamed midsole (foaming and curing the foam composition, [0066]-[0068], Figs. 9-10), wherein a part of the foamed midsole physically engages the insert layer to generate an anchor effect with the insert layer (the insert being bound with the foam composition 130, [0068]; having a mechanical engagement portion such as an aperture that aids in securement to the foam composition 130, [0038]), thereby obtaining a shoe component (Fig. 10).
Chamblin does not explicitly disclose in one example using a thermoplastic foaming material and physical foaming of the thermoplastic material; however, Chamblin discloses that the foaming composition can be selected from materials including thermoplastic materials and that a polymeric foamed composition is achieved by chemical or physical foaming ([0034]). As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a thermoplastic material as the polymeric foam composition and to perform physical foaming to achieve the foamed composition with a reasonable expectation of success. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. MPEP 2144.07.
Chamblin discloses the function ([0031]), material and form ([0038]-[0039]) of the insert layer are not limited. Chamblin does not disclose the insert layer is a “mesh” layer. Chamblin discloses the insert layer being bonded to and mechanically engaged with the foamed midsole (the insert being bound with the foam composition 130, [0068]; having a mechanical engagement portion such as an aperture that aids in securement to the foam composition 130, [0038]). Chamblin describes that physical engagement between the foam and another element can be by infiltration ([0043]). Chamblin discloses the foamed midsole is formed to be adjacent the second surface of the insert layer (Fig. 2, foam 130 above the upper facing surface 123 of the insert 142) but does not explicitly disclose a part of the physically foamed midsole enters the second surface structure of the second surface of the mesh layer to generate an anchor effect with the mesh layer.
In the analogous art, Merlo discloses a footwear sole assembly (Abstract, Figs. 2-4) wherein a composite outsole (outsole 34) is formed from an insert layer configured as a support component 3 comprised of one or more cloth elements ([0020], [0023]) in addition to the tread component 4 (Figs. 2-4). The cloth element is constituted by a plurality of meshes constrained to each other ([0026]). Merlo teaches the cloth element improves the outsole by providing support and reinforcement for the tread ([0025], [0063]) and enables direct attachment to the midsole 2 and a shoe upper ([0027], [0058]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the insert layer of Chamblin to use the support structure taught by Merlo comprised of a mesh layer in order to implement a structure providing support and reinforcement for the underlying tread structure of the outsole as taught by Merlo. Merlo discloses the mesh structure is open such that material molded with the mesh structure can extend between the meshes (Merlo [0023]). As such, incorporation of the mesh structure as the insert layer between the outsole and the midsole in the molding method of Chamblin would result in a part of the physically foamed midsole entering the second surface structure of the second surface of the mesh layer to generate an anchor effect with the mesh layer, thereby achieving a goal of Chamblin to provide mechanical engagement between the insert and the foamed midsole via the insert having physical elements such as apertures that aid in securement of the insert to the adjacent sole structures (Chamblin [0038]).
The combination is silent as to the first surface structure of the mesh being different from the second surface structure; however, the first and second surface structures can either be the same or different. In a cloth structure comprised of one or more pieces made by interweaved threads constituting a plurality of meshes constrained to each other as disclosed by Merlo ([0023], [0026]), i.e., a relatively complex construction, allowing for the surface structures to differ would render the mesh easier to construct than requiring the surface structures of the different sides to be exactly the same. Therefore, of the two options, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further specify that the first surface structure is different from the second surface structure because "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103." KSR, 550 U.S. at 421, 82 USPQ2d at 1397. MPEP 2143(I)(E).
Chamblin is silent as to the injected foaming fluid comprising a supercritical fluid and that before the foaming fluid is injected into the foaming mold an air pressure in the foaming mold, which is preset, ranges from 5 bar to 50 bar, where the foaming is achieved through the supercritical fluid by releasing the air pressure in the foaming mold.
In the analogous art of foam molding shoe components (Abstract), Yang discloses molding conditions for physically foaming thermoplastic foaming fluid to make sole components ([0006]-[0009], Fig. 1). Yang teaches the foaming fluid including a thermoplastic material and a supercritical fluid ([0029]), and that before the foaming fluid is injected into the foaming mold an air pressure in the foaming mold, which is preset, ranges from 5 bar to 50 bar (making a predetermined gas pressure, step 102, which is in a range of 5-50 bar, [0028], Fig. 1), and the foaming is achieved through the supercritical fluid (the supercritical fluid being gasified, [0033]) by releasing the air pressure in the foaming mold (releasing the predetermined gas pressure, step 106, [0030], [0033], Fig. 1). Yang teaches the conditions support a physical foaming process providing a foam product with a plurality of foaming bores that are dense and uniform, and the shoe component can have improved physical properties such as smaller bore diameter, greater resilience, less compression set, and greater tear strength ([0035]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the foaming process of Chamblin to specify that the injected foaming fluid comprises a supercritical fluid and that before the foaming fluid is injected into the foaming mold an air pressure in the foaming mold, which is preset, ranges from 5 bar to 50 bar, where the foaming is achieved through the supercritical fluid by releasing the air pressure in the foaming mold, so as to achieve a physically foamed product with dense and uniform bores and improved physical properties as taught by Yang.
Regarding claim 15, modified Chamblin discloses the method of claim 13, wherein in step S1, the composite outsole is provided by placing the mesh layer into an injection mold (Chamblin: Figs. 5-6, the insert is placed into the injection mold 200, [0058]-[0060]; per the combination of claim 13 the insert being the mesh layer), injecting an outsole material into the injection mold (Chamblin: injecting polymeric composition 230 that forms the outsole layer 138, Figs. 6-7, [0060]), and solidifying the outsole material to form the base layer to engage the base layer with the first surface of the mesh layer (Chamblin: curing the outsole material coupled with the bottom facing surface of the insert, [0064], Figs. 6-7) thereby obtaining the composite outsole.
Regarding claim 17, modified Chamblin discloses the method of claim 13, wherein in step S1, the composite outsole is provided by placing the mesh layer into a molding tool (Chamblin: insert 142 is placed into mold 200, [0058]-[0060]; per the combination of claim 13 the insert being the mesh layer), injecting by an injection apparatus an outsole material into the molding tool (Chamblin: injecting polymeric composition 230 that forms the outsole layer 138, Figs. 6-7, [0060]; injection via an injector 304, [0046]) to correspond to [the] first surface of the mesh layer (Chamblin: the injected material being adjacent the bottom facing surface of the insert 142, Figs. 6-7, i.e., corresponding to the first surface as set forth in claim 13), and solidifying the outsole material to form [the] base layer [and] to engage the base layer with the first surface of the mesh layer (Chamblin: curing the outsole material coupled with the bottom facing surface of the insert, [0064], Figs. 6-7) thereby obtaining the composite outsole.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chamblin, US 20190365027 A1, in view of Merlo, US 20170340061 A1, and Yang et al., US 20200331180 A1, as applied to claim 13 above, and further in view of Jones et al., US 20140020191 A1.
Regarding claim 16, modified Chamblin discloses the method of claim 13. The combination discloses in step S1, the composite outsole includes the mesh layer and the base layer engaged together (Chamblin: the insert 142 bonded with the outsole layer 138, [0042], Fig. 8; the insert being the mesh cloth layer per the combination of claim 13) by solidifying an outsole material to form the base layer to engage with the mesh layer (contacting the outsole material with the insert prior to complete curing of the outsole material to adhere and couple the two components, [0042]; coupling insert 142 and composition 230 of outsole layer 138 during curing, [0062]) thereby obtaining the composite outsole.
Chamblin further discloses the composite outsole can be formed separately instead of by injection in the molding tool ([0059]). The combination does not disclose the composite outsole is provided by directly printing the outsole material on the first surface of the mesh layer by using a 3D printing apparatus.
In the analogous art, Jones discloses 3D printing directly onto fabric materials of footwear ([0001]). Jones teaches printing a polymeric material onto a surface of a fabric layer using a 3D printing apparatus ([0076]-[0077], Figs. 7 and 10-17). The fabric onto which material is 3D printed can be comprised of threads 22 and the printed material 70 may be at least partially absorbed into a surface region to aid in adhesion/bonding ([0061], Fig. 10). Jones exemplifies the process being performed on fabric such as an upper ([0076]-[0077]) but discloses that the technique can be used to print desired patterns, layers, or materials directly onto any fabric material ([0034], [0088]). Jones teaches that 3D printing enables customization of layers of the printed material in terms of different materials, colors, chemistries, fillers, material properties, etc. ([0068]-[0069]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the step of providing the composite outsole of the combination such that it was provided by directly printing the outsole material on the first surface of the mesh layer by using a 3D printing apparatus in order to enable full customization of the features of the material bonded to the mesh layer in forming the composite article, as taught by Jones.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20240197033 A1, Bidal et al. disclose shoe manufacturing wherein a physically foamed midsole is molded by injection between an upper and an outsole, and an upper surface of the outsole is provided with surface features such as apertures for engagement with the midsole material.
US 20210177104 A1, Bellali et al. disclose a method of forming a footwear article including molding an outsole and then foam molding a midsole by injection between the outsole and the upper, wherein a lattice structure is placed between the outsole and the midsole.
US 20130276333 A1, Wawrousek et al. disclose footwear manufacturing by physical foam molding onto one or more sides of a fabric/mesh material via injection of a foaming fluid and a supercritical fluid with pressure control, where the foam penetrates and extends into the fabric.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER L GROUX whose telephone number is (571)272-7938. The examiner can normally be reached Monday - Friday: 9am - 5pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Susan Leong can be reached at (571) 270-1487. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.L.G./Examiner, Art Unit 1754
/FARAH TAUFIQ/Primary Examiner, Art Unit 1754
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