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 with traverse of species IX shown in figures 18A-C in the reply filed on 11/21/25 is acknowledged. The traversal is on the ground(s) that species VI, IX, and X all show inner soles with protuberances. This is not found persuasive because the different species show different patterns and locations of protuberances and therefore are different species. In reference to the elected species of the inner sole IX shown in figures 18A-C being capable of being used in combination with a midsole as taught by the species VI, shown in figures 12-15, the specification provides vague, general basis for such in paragraph [0184], however there is no figure showing such a combination or clear disclosure of such. For Examination purposes the Examiner has considered the claims directed towards the insole of species IX with a midsole, however claims directed towards the different species, i.e. patterns of protuberances has not been considered as those claims are directed towards unelected species.
The requirement is still deemed proper and is therefore made FINAL.
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) 15 and 18-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wynn (2015/0237959) in view of Suginaka (5063692).
Wynn shows A sole for an article of footwear, comprising:
an inner sole (see figure 1) having a top surface, a toe region, a midfoot region, and a heel region and configured to support a foot of a wearer;
first protuberances (8) arranged at a toe region of the inner sole;
second protuberances (12) arranged along a lateral side of a midfoot region of the inner sole;
third protuberances (14 and 16) arranged on a heel region of the inner sole; and
a first untextured area with no protuberances (see figure 1), wherein the first untextured area is arranged at the midfoot region and extends from a central portion to a medial edge of the inner sole (as shown below in the marked up figure) substantially as claimed except for an enlarged toe protuberance. Suginaka teaches providing an enlarged slope toe protuberance (15). It would have been obvious to provide an enlarged protuberance as taught by Suginaka in the footwear of Wynn to provide support and to prevent slipping under the toes of the foot.
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In reference to claim 18, the center of the heel (between 14 and 16) does not have any texture.
In reference to claim 19, the lateral portion of the toe is shown in figure 1 with no texture/protuberances.
In reference to claims 20-25, see shape shown by Suginaka for element 15.
Claim(s) 15 and 18-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ferniani (2019/0142107) in view of Suginaka (5063692).
Ferniani shows A sole for an article of footwear, comprising:
an inner sole (see figure 1) having a top surface, a toe region, a midfoot region, and a heel region and configured to support a foot of a wearer;
first protuberances (24) arranged at a toe region of the inner sole;
second protuberances (20) arranged along a lateral side of a midfoot region of the inner sole;
third protuberances (20 and 22) arranged on a heel region of the inner sole; and
a first untextured area with no protuberances (see figure 1 where number 50 points to) wherein the first untextured area is arranged at the midfoot region and extends from a central portion to a medial edge of the inner sole (as shown below in the marked up figure) substantially as claimed except for an enlarged toe protuberance. Suginaka teaches providing an enlarged slope toe protuberance (15). It would have been obvious to provide an enlarged protuberance as taught by Suginaka in the footwear of Ferniani to provide support and to prevent slipping under the toes of the foot.
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In reference to claim 18, the center of the heel (at 40) does not have any texture.
In reference to claim 19, the lateral portion of the toe is shown in figure 1 with no texture/protuberances (area forward of 32).
In reference to claim 20, element 32 is considered to be generally triangular shaped.
In reference to claims 20-25, see shape shown by Suginaka for element 15.
Allowable Subject Matter
Claims 1-3, 5-9, and 26-28 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art to Horvath does show footwear with an inner sole having a first untextured surface and a second surface with protuberances and a midsole with corresponding mating elements however Horvath does not teach the inner sole being configured to be configured so that the protuberances are oriented upward and it would appear that to do so would possibly destroy the footwear by separating elements not disclosed as separateable and the purposes disclosed of Horvath would be eliminated and the inner sole and midsole would slide and not function as disclosed.
Response to Arguments
Applicant's arguments filed 7/31/26 have been fully considered but they are not persuasive.
In reference to applicants’ arguments directed towards Wynn or Ferniani, see above rejection with marked up figures.
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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/MARIE D BAYS/Primary Examiner, Art Unit 3732
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