Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 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 1-9, 11, 12, and 16 are 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. There is no basis in the original specification and drawings for the phrase “a holeless wall”. The drawings actually show small elements which are unnumbered in figures 6B and 6D which may be holes. It is not clear what structural limitations applicant intends to encompass with such language because there is no basis in the specification for this phrase.
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 1-9, 11, 12, and 16 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.
In claim 1 the phrase “holeless wall” is confusing, vague, and indefinite because it is not clear what structural limitations applicant intends to encompass with such language.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-5, and 13-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Beers (10568385).
Beers ‘385 shows (see specifically figures 68-71B) An article of footwear comprising:
a sole (2632); and
an upper (38) attached to said sole; and
a heel support (2810) attached to said upper, said heel support including a holeless wall (see figures 68-71B) extending between a medial side and a lateral side of said sole (2818 and 2820), said wall extending continuously from a top end to a bottom end of said upper and continuously between said medial side and said lateral side of said upper, said heel support including at least one flex point to enable said heel support to move between a non-flexed position and a flexed position (see column 32 lines 1-30), wherein pressure against the heel support causes the heel support to move to the flexed position, and wherein the heel support moves back to the non-flexed position when the pressure is released from the heel support as claimed.
In reference to claims 2 and 3, see figures 68-71B which shows an angle of about 30 degrees which is in the range claimed.
In reference to claim 4, Beers shows a main member (2810) having medial/lateral members (2818 and 2820).
In reference to claims 5 and 16, see front of 435A which is considered to be a tongue.
In reference to claims 13-15, see above and figures 68-71B which show such.
Claim(s) 1-4, 8, 9, 13-15, and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Farina (2024/0122300).
Farina shows An article of footwear comprising:
a sole (124); and
an upper (106) attached to said sole; and
a heel support (102) attached to said upper, said heel support including a holeless wall (the wall of Farina is considered to be “holeless” as shown and described below) extending between a medial side and a lateral side of said upper, said wall extending continuously from a top end to a bottom end of said upper and continuously between said medial side and said lateral side of said upper, said heel support and including at least one flex point to enable the heel support to move between a non-flexed position and a flexed position (see paragraph [0027]),
wherein pressure against the heel support causes the heel support to move to the flexed position, and wherein the heel support moves back to the non-flexed position when the pressure is released from the heel support as claimed.
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In reference to claims 2, 3, 8, 9, 14, 15, and 19, see below marked up figure.
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In reference to claims 4 and 13, see figure 5 which shows medial and lateral members as claimed. In reference to a midsole, Farina teaches a plurality of layers of sole (see paragraph [0030]). The top instep portion of the upper shown in figures is considered to be an “integrated tongue” inasmuch as applicant has claimed and defined such.
Claim(s) 1-4, 8, 9, 11-15, and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kilgore (2023/0015860).
Kilgore ‘860 shows An article of footwear comprising:
a sole (53); and
an upper (52) attached to said sole; and
a heel support (10) attached to said upper, said heel support including a holeless wall extending
between a medial side and a lateral side of said upper (the heel support of Kilgore extends continuously with no holes medial to laterally as shown in the figures without holes), said wall extending continuously from a top end to a bottom end of said upper and continuously between said medial side and said lateral side of said upper (the structure 10 of Kilgore is a solid single piece of material, i.e. not a plurality of separate and distinct element), said heel support including at least one flex point to enable said heel support to move between a non-flexed position and a flexed position (as discussed in the specification),
wherein pressure against said heel support causes said heel support to move to the flexed position, and wherein said heel support moves back to the non-flexed position when the pressure is released from said heel support as claimed.
In reference to claims 2, 3, 14, and 15, Kilgore shows an angle of about 35 degrees as shown in the figures.
In reference to claims 4 and 13, see figures which shows medial and lateral members as claimed. In reference to a midsole, Farina teaches a plurality of layers of sole (see paragraph [0082]). The top instep portion of the upper shown in figures 6 and 7 is considered to be an “integrated tongue” inasmuch as applicant has claimed and defined such.
In reference to claims 8, 9, and 19, Kilgore shows ridges (24A-D) one which extends greater (at 12A) as claimed.
In reference to claim 11, see page 5 second column lines 6-7 which suggests the use of thermoplastic polyurethane.
In reference to claim 12, Kilgore teaches placing heel support (10) between an inner layer (52A) and outer layer (52B).
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.
Claim(s) 6, 7, 17, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beers ‘385, Farina, and/or Kilgore.
Beers ‘385 Farina, and/or Kilgore discloses the claimed invention except for the exact materials. It would have been obvious to one having ordinary skill in the art at the time the invention to use the claimed materials and/or materials with the claimed specific parameters, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Response to Arguments
Applicant's arguments filed 5/8/26 have been fully considered but they are not persuasive.
In reference to applicants’ arguments directed towards the newly added phrase “heel support including a holeless wall extending between a medial side and a lateral side of said upper”, all of the applied references above extend continuously without a hole along the top edge and /or the bottom edge of the upper from the medial side to the lateral side in that the supports are a one piece configuration, i.e. not a plurality of separate and distinct pieces and the supports as considered to be “holeless” inasmuch as applicant has defined and shown such. Also, Beers clearly shows such in figures 68-71B.
In reference to the newly added phrase “said wall extending continuously from a top end to a bottom end of said upper and continuously between said medial side and said lateral side of said upper”, Beers clearly shows such in figures 68-71B. Additionally Farina and/or Kilgore show heel supports which are continuous, i.e. one piece, not separate pieces which extend from the medial side to the lateral side of the upper and from the top to the bottom of the upper.
The prior art cited and not relied upon by the Examiner for the above rejections are considered to be pertinent in that the references cited are considered to be the nearest prior art to the subject matter defined in the claims as required by MPEP707.05.
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Any inquiry concerning the MERITS of this examination from the examiner should be directed to Marie Bays whose telephone number is (571) 272-4559. The examiner can normally be reached from Mon-Thurs 6-4. Alternatively if the Examiner cannot be reached, please contact the Examiners SPE Alissa Tompkins at 571-272-3425.
/MARIE D BAYS/Primary Examiner, Art Unit 3732
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