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 .
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.
Election/Restrictions
Applicant’s election without traverse of Species IX, Figures 9a-b and claims 1-20 in the reply filed on 11/25/2025 is acknowledged.
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.
Claims 1-20 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 1 recites the limitation "the loose particles" in line 5. There is insufficient antecedent basis for this limitation in the claim. It is not clear if the loose particles in line 5 are the same particles in line 3 that form the midsole. It appears that the loose particles, are particle that fill the cavity.
The limitation, in lines 5-6 of claim 1, “the loose particles have a weight at least twice the weight of the surrounding midsole material of a same size”, is vague and indefinite. It is not clear what structure is encompassed by such language? Is the loose particle the same size of the particles of expanded material? Or once the midsole is formed from particles of expanded material, a midsole material that is the size of the loose particle has a weight that at least less than twice the weight of the loose particle?
Claim 7 recites the limitation "the expanded material of the loose particles" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the expanded material of the loose particles" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the expanded material of the loose particles" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "the expanded material of the loose particles" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Appropriate clarification and correction is required.
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.
Claim(s) 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Reddy et al. (Pub. No. US 2019/0343225, herein after Reddy) in view of Prissok et al. (Pub. No. US 2010/0222442, herein after Prissok).
With respect to claim 1, Reddy discloses a sole for a shoe (shoe sole 11 includes an outsole 17, a midsole 19, an insert 21, balls 23 and cavity covers 25), the sole comprising:
a. a sole component comprising a midsole (midsole 19, see figures 2-5), wherein the midsole is formed from thermoplastic polyurethane (PU, see paragraph [0056]) material
b. wherein the midsole (19) comprises a cavity (cavities 55; 57; 71, see figure 2); and
c. wherein the cavity is filled with loose particles (PU balls/spheres 23, see paragraph [0051]); and wherein the loose PU particles (harder PU (heavier) that can have a shore C hardness of 68, see paragraph [0051]) have a weight that can be more than the weight of the surrounding midsole PU material of the same size (softer PU (lighter than a harder PU material of the same size) that can have a Shore C hardness of 55, see paragraph [0056]).
Reddy as described above discloses all the limitations of the claims except being silent about the midsole being formed from particles of expanded material and for the loose particles to have a weight at least twice the weight of the surrounding midsole material of a same size.
Prissok discloses that the use of expanded thermoplastic polyurethane (eTPU) particles in forming soles for footwear is well known in the art. Therefore, it would have been obvious to one of ordinary skill in the art to make the PU midsole of Reddy from eTPU particle as taught by Prissok, to improve the performance of the midsole in relation to elasticity and to temperature variation.
With respect to the loose particles to have a weight at least twice the weight of the surrounding midsole material of a same size, it would have been obvious to one of ordinary skill in the art to modify the hardness in turn the weight of the loose particles to be twice the weight of the surrounding midsole material of the same size, depending on the intended use of the shoe. The claim would have been obvious because the design incentives or market forces provided a reason to make an adaptation, and the invention resulted from application of the prior knowledge in a predictable manner.
Absent further distinguishing limitations in the claim(s) regarding parameters such as hardness and/or modulus of elasticity or specific materials, the (combined) reference(s) meet the claim limitation.
Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Where general conditions of a claim are disclosed in the prior art it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955).
With respect to claim 2, Reddy/Prissok discloses wherein the particles of an expanded material in the midsole are formed from expanded thermoplastic polyurethane/eTPU (Prissok discloses that use of eTPU in footwear is well known).
With respect to claim 3, Reddy/Prissok discloses wherein the particles of an expanded material in the midsole are formed from eTPU (Prissok discloses that use of eTPU in footwear is well known).
With respect to claim 4, Reddy/Prissok discloses wherein the loose particles can be formed from expanded thermoplastic urethane/eTPU (Prissok discloses that use of eTPU in footwear is well known).
With respect to claim 5, Reddy/Prissok discloses wherein the loose particles can be formed from eTPU (Prissok discloses that use of eTPU in footwear is well known).
With respect to claim 6, Reddy/Prissok discloses wherein the particles of an expanded material in the midsole are formed from a different material than the loose particles. Reddy discloses that the loose particles/balls 23 are solid and can be made of a resilient material such as thermoplastic rubber (TPR), polyurethane (PU), polyethylene or ethylene-vinyl acetate rubber (EVA).
With respect to claim 7, as best understood by the examiner, Reddy/Prissok the sole of claim 1, to disclose a midsole, wherein the expanded material of the midsole (the midsole 19 can be made of EVA or PU) is a different expanded material than the expanded material of the loose particles (Reddy discloses that the loose particles/balls 23 can be made of thermoplastic rubber (TPR)).
With respect to claim 8, as best understood by the examiner, Reddy/Prissok discloses the sole of claim 1 to comprise an insole (translucent cover 25), wherein the expanded material of the insole can be different expanded material than the expanded material of the loose particles. Reddy discloses that the loose particles/balls 23 are solid and can be made of a resilient material such as thermoplastic rubber (TPR), polyurethane (PU), polyethylene or ethylene-vinyl acetate rubber (EVA).
With respect to claim 9, as best understood by the examiner, Reddy/Prissok discloses the sole of claim 1, to comprise a midsole (19), wherein the expanded material of the midsole can be the same expanded material as the expanded material of the loose particles. Reddy discloses that the loose particles/balls 23 are solid and can be made of a resilient material such as thermoplastic rubber (TPR), polyurethane (PU), polyethylene or ethylene-vinyl acetate rubber (EVA).
With respect to claim 10. As best understood by the examiner, Reddy/Prissok discloses the sole of claim 1, comprises an insole, wherein the expanded material of the insole (eTPU) can be the same expanded material as the expanded material of the loose particles (eTPU).
With respect to claim 11, Reddy/Prissok discloses wherein the loose particles (23) are embedded in the sole (surrounded by the midsole, see figures 1-5)
With respect to claim 12, Reddy/Prissok discloses wherein the loose particles (23) can extend above a surface of sole material surrounding the cavity (see figure 10).
With respect to claim 13, Reddy/Prissok discloses that the loose particles (23) can extend below a surface of sole material surrounding the cavity (see figure 5).
With respect to claim 14, Reddy discloses that the loose particles/balls 23 are solid and can be made of a resilient material such as thermoplastic rubber (TPR), polyurethane (PU), polyethylene or ethylene-vinyl acetate rubber (EVA). It would have been obvious to one of ordinary skill in the to make the loose particles of Reddy/Prissok from metal, 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.
With respect to claim 15, Reddy/Prissok discloses the loose particles have a spherical (balls 23) shape.
Claim(s) 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Reddy/Prissok as applied to claims 1-15 above, and further in view of Hartman et al. (Pub. No. US 2018/0352900).
Reddy/Prissok as modified above discloses all the limitations of the claims except for wherein the cavity is separated from a shoe upper by one of a mesh-like material, layer of textile and/or foil.
Hartman discloses a sole for a shoe having a cavity/hollow space containing a plurality of particles therein, wherein the cavity is separated from a shoe upper by a foil or a plane textile material (textile material can be woven, i.e. mesh) which is connected, preferably glued, with a part of the sole. Subsequently, the hollow space is closed so that the spheres and ellipsoids respectively cannot fall out again. A foil or a textile material is provided by which the opening of the hollow space can be closed.
Therefore, it would have been obvious to one of ordinary skill in the art to provide a foil and/or textile to separate the cavity of Reddy/Prissok from the shoe upper as taught by Hartman, to better contain the plurality of the particle within the cavity.
With respect to claims 16-17, the combination of Reddy/Prissok/Hartman discloses wherein the cavity can be separated from a shoe upper by one of a mesh-like material, layer of textile and/or foil.
With respect to claims 18 and 20, the foil and/or textile of Reddy/Prissok/Hartman will inherently form a pouch with the cavity that will contain the loose particles.
With respect to claim 19, Reddy/Prissok/Hartman discloses a shoe comprising the sole of claim 18, wherein the shoe further comprises an outsole (17, see figures 1-2 of Reddy) and wherein the outsole contains an opening having a size greater than each of the loose particles.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shown are soles for a shoe analogous to applicant’s instant invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JILA M MOHANDESI whose telephone number is (571)272-4558. The examiner can normally be reached M-Thurs. 7:00-5:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alissa J Tompkins can be reached at 571-272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JILA M MOHANDESI/Primary Examiner, Art Unit 3732
JMM
01/07/2026