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 .
Response to Amendment
The amendments filed on 10/24/2025 have been entered. Claims 1-9 and 17-27 remain pending in the application, with Claims 10-16 being newly amended, Claims 21-27 being newly added, and Claims 1, 7, 17, and 20. Applicant’s amendments to the Claims and Specification have overcome each and every objection previously set forth in the Non-final Office Action mailed 09/10/2025++.
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) 17, 18 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Connell et al. (US 2018/0213886). Examiner notes that Claims 1 and 17 are rejected in view of different embodiments of Connell et al., therein are placed under different headings.
Regarding Claim 17, Connell et al. teaches a sole structure (14m) for an article of footwear (10m) including an upper (12), the sole structure comprising: a first plate (296) continuously extending from an anterior end at a forward most portion of the sole structure to posterior end at a rearmost portion of the sole structure (paragraph [0325] teaches “the plate 296 is a full-length plate and extends substantially continuously from the anterior end 44 to the posterior end 46, as discussed above with respect to the article of footwear 10,” therein the plate clearly extends from an anterior end at a forwardmost portion to a posterior end at a rearmost portion), the first plate including a first surface (see annotated Fig.) opposing the upper and a second surface (see annotated Fig.) opposite the first surface (annotated fig. 59 shows the first surface opposing the upper and the second surface opposite the first surface); a second plate (38m) extending from a forefoot region of the sole structure to a heel region of the sole structure and including a third surface opposing the second surface of the first plate, and a fourth surface opposite side the third surface (figs. 59 and 61B show the second plate (38m) extending from the forefoot to the heel region and having a third surface opposing the second surface and a fourth surface opposite the third surface), wherein the fourth surface of the second plate is a ground-engaging surface (annotated fig. 59 shows the fourth surface being a ground engaging surface); a first cushion (64m) attached to the second surface of the first plate and attached to the third surface of the second plate, wherein the first cushion includes a concave edge (annotated fig. 61A shows the first cushion (64m) having a concave edge); a second cushion (66m) attached to the second surface of the first plate and attached to the third surface of the second plate (figs. 59 and 61A show the first (64m) and second (66m) cushions attached the second surface and third surface) wherein the second cushion includes a convex edge, the concave edge and the convex edge face one another (fig. 60 shows the second cushion including a convex edge facing the concave edge); and a first gap (see annotated Fig.) extending between the concave edge and the convex edge (annotated fig. 61A shows a first gap extending between the convex and concave edges).
Regarding Claim 18, Connell et al. teaches all of the limitations of the sole structure of Claim 17, as discussed in the rejections above. Connell et al. further teaches a third cushion (152m), the third cushion disposed between the first plate and the second plate (figs. 59 and 61B show the third cushion (152m) disposed between the first (296) and second (38) plates), and the third cushion disposed anterior to both a first end of the first cushion and a first end of the second cushion, wherein the third cushion is separated from each of the first cushion and the second cushion by a second gap (see annotated Fig.) (annotated figs. 58 and 60 show the third cushion (152m) being spaced from the first (64m) and second (66m) cushions by a second gap).
Regarding Claim 20, Connell et al. teaches all of the limitations of the sole structure of Claim 17, as discussed in the rejections above. Connell et al. further teaches a fourth cushion (154m) extending from a first end (see annotated Fig.) disposed adjacent to a second end of the first cushion and a second end of the second cushion, to the heel region of the sole structure (annotated fig. 59 shows the fourth cushion (154m) extending from a first end adjacent the second end of the first and second cushions to the heel region), the fourth cushion attached to the first plate and the second plate from the first end of the fourth cushion through the heel region of the sole structure (fig. 61B shows the fourth cushion (154m) being attached the first (296) and second (38m) plates from the first end of the fourth cushion through the heel region).
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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) 1-6, 8-9, 21, 22, 25, and 26 is/are rejected under 35 U.S.C. 102(a)(1) as being obvious over Connell et al. (US 2018/0213886) in view of a second embodiment of Connell et al, hereinafter referred to as Connell2.
Regarding Claim 1, Connell et al. teaches a sole structure (14k) for an article of footwear (10k) including an upper (12), the sole structure comprising: a first plate (266) extending from a forefoot region (16) of the sole structure to a heel region (20) of the sole structure (fig. 55 shows the first plate (266) extending from the forefoot (16) to the heel (20) region)), the first plate including a first surface (see annotated Fig.) opposing to the upper and a second surface (see annotated Fig.) opposite the first surface (annotated fig. 55 shows the first plate (266) having a first surface opposing the upper and a second opposite surface), a second plate (268) extending from the forefoot region of the sole structure to the heel region of the sole structure (fig. 55 does not show the second plate (268) extending from the forefoot (16) to the heel (20) region, however paragraph [0305] teaches “any one or more of the plates 266, 268, 270 may be full-length plates, as described above, which extend from the anterior end 44 to the posterior end 46 of the sole structure 14k,” therein the second plate (268) can clearly extend from the forefoot to the heel region) and including a third surface (see annotated Fig.) opposing the second surface of the first plate, and a fourth surface (see annotated Fig.) opposite than the third surface (annotated fig. 55 shows the second plate (268) having a third surface opposing the second surface and a fourth opposite surface); a heel pad (154k1) extending from a first terminal end (see annotated Fig.) disposed in a mid-foot region of the sole structure to a second terminal end (see annotated Fig.) disposed in the heel region of the sole structure, such that the first terminal end of the heel pad terminates in the mid-foot region and the heel pad does not extend into the forefoot region (annotated fig. 57B shows the heel pad extending from a first terminal end in the midfoot region to a second terminal end in the heel region, the heel pad terminating completely in the midfoot region before reaching the forefoot region), the heel pad connecting the first plate (266) and the second plate (268) in the mid-foot region such that the second plate is supported in the mid-foot region (figs. 55 and 57B show the heel pad 154k1 extending between and connecting the first plate (266) and the second plate (268) in the midfoot region, therein also supporting the second plate (268) in the midfoot region), wherein a portion of the heel pad extends along an outer side surface of the upper (fig. 57B shows the heel pad 154k1 extending along an outer side surface of the upper (12)); a first cushion (188k), extending in a direction from the forefoot region to the heel region (figs. 55 and 56 show the first cushion (188k) extending in a direction from the forefoot to the heel region), wherein a widest part of the first cushion has a first width (fig. 56 shows the widest part of the first cushion having a first width, wherein first cushion is part of arrangement (64k)); and a second cushion (192k) extending the direction from the forefoot region to the heel region (figs. 55 and 56 show the second cushion (192k) extending in a direction from the forefoot to the heel region), wherein a widest part of the second cushion has a second width (fig. shows the widest part of the second cushion having a second width, wherein second cushion is part of arrangement (66k)).
Connell et al. does not teach wherein the second width is different than the first width.
Attention is drawn to Connell2, which teaches an analogous article of footwear. Connell2 teaches a sole structure (14f) for an article of footwear (10f) including an upper (12), the sole structure comprising: a first plate (196) extending from a forefoot region (16) of the sole structure to a heel region (20) of the sole structure (fig. 34 shows the first plate (196) extending from the forefoot (16) to the heel (20) region), the first plate including a first surface (see annotated Fig.) opposing to the upper and a second surface (see annotated Fig.) opposite the first surface (annotated fig. 35 shows the first plate (196) having a first surface opposing the upper and a second opposite surface), a second plate (198) extending from the forefoot region of the sole structure to the heel region of the sole structure (fig. 34 shows the second plate (198) extending from the forefoot (16) to the heel (20) region) and including a third surface (see annotated Fig.) opposing the second surface of the first plate, and a fourth surface (see annotated Fig.) opposite than the third surface (annotated fig. 35 shows the second plate (198) having a third surface opposing the second surface and a fourth opposite surface); a heel pad (see annotated Fig.) extending from a first terminal end (see annotated Fig.) disposed in a mid-foot region of the sole structure to a second terminal end (see annotated Fig.) disposed in the heel region of the sole structure (annotated fig. 35 shows the heel pad extending from a first terminal end in the midfoot region to a second terminal end in the heel region), the heel pad connecting the first plate (196) and the second plate (198) in the mid-foot region such that the second plate is supported in the mid-foot region (figs. 34 and 35 shows the heel pad extending between and connecting the first plate (196) and the second plate (198) in the midfoot region, therein also supporting the second plate (198) in the midfoot region), wherein a portion of the heel pad extends along an outer side surface of the upper (fig. 34 shows the heel pad extending along an outer side surface of the upper (12) such as to cover the strobel seam (as shown in fig. 35)); a first cushion (188f), extending in a direction from the forefoot region to the heel region (figs. 35 and 37 show the first cushion (188f) extending in a direction from the forefoot to the heel region), wherein a widest part of the first cushion has a first width (fig. 37 shows the widest part of the first cushion having a first width, wherein first cushion is part of arrangement (64f)); and a second cushion (192f) extending the direction from the forefoot region to the heel region (figs. 35 and 37 show the second cushion (192f) extending in a direction from the forefoot to the heel region), wherein a widest part of the second cushion has a second width different than the first width (fig. 37 shows the widest part of the second cushion having a second width being greater than and therein different from the first width, wherein second cushion is part of arrangement (66f)).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Connell et al. to include the teachings of Connell2 such that the second width is different than the first width so as to allow greater cushioning on one side of the wearer’s foot than the other in order to support specific motion of the wearer’s foot during the gait cycle.
Regarding Claim 2, Connell et al. teaches all of the limitations of the sole structure of Claim 1 as discussed in the rejections above. Connell et al. further teaches wherein the first cushion (188k) is disposed between the first plate (266) and the second plate (268) in the forefoot region (figs. 55 and 57B show the first cushion (188k) disposed between the first (266) and second (268) plates in the forefoot region (16)).
Regarding Claim 3, Connell et al. teaches all of the limitations of the sole structure of Claim 2 as discussed in the rejections above. Connell et al. further teaches wherein the first cushion (188k) is attached to the second surface of the first plate (266) and is attached to the third surface of the second plate (268) (annotated fig. 55 and fig. 57A show the first cushion (188k) attached to the second surface of the first plate (266) and the third surface of the second plate (268)).
Regarding Claim 4, Connell et al. teaches all of the limitations of the sole structure of Claim 2 as discussed in the rejections above. Connell et al. further teaches wherein the first cushion (188k) is a fluid-filled bladder (paragraph [0308] teaches “a first fluid-filled chamber 188k”).
Regarding Claim 5, Connell et al. teaches all of the limitations of the sole structure of Claim 4 as discussed in the rejections above. Connell et al. further teaches wherein the second cushion (192k) is disposed between the first plate (266) and the second plate (268) (figs. 55 and 57A show the second cushion (192k) disposed between the first (266) and second (268) plates).
Regarding Claim 6, Connell et al. teaches all of the limitations of the sole structure of Claim 5 as discussed in the rejections above. Connell et al. further teaches wherein the heel pad (254k1) is disposed between the first cushion (188k) and a posterior end of the sole structure (annotated figs. 55 and 57B show the heel pad disposed between the first cushion (188k) and the posterior end of the sole).
Regarding Claim 8, Connell et al. teaches all of the limitations of the sole structure of Claim 1 as discussed in the rejections above. Connell et al. further teaches wherein the first plate (266) has a first thickness (see annotated Fig.) in the forefoot region and the first plate has a second thickness (see annotated Fig.) in the mid-foot region of the sole structure (annotated fig. 55 shows the first and second thicknesses in the forefoot and midfoot regions, respectively).
Regarding Claim 9, Connell et al. teaches all of the limitations of the sole structure of Claim 1 as discussed in the rejections above. Connell et al. further teaches wherein the third surface (see annotated Fig.) is spaced apart from the second surface (see annotated Fig.) to define a cavity (see annotated Fig.) between the first plate and the second plate which extends from a medial side of the sole structure to a lateral side of the sole structure between the forefoot region and the heel region (figs. 57A,B show the cavity being defined between the second and third surfaces and extending from a medial to a lateral side of the sole structure between the forefoot and heel regions).
Regarding Claim 21, Connell et al. teaches a sole structure (14k) for an article of footwear including an upper (12), the sole structure comprising: a first plate extending from a forefoot region of the sole structure to a heel region of the sole structure, the first plate (268) including a first surface configured to oppose the upper and a second surface opposite the first surface (annotated fig. 55 shows the first plate (268) having a first surface opposing the upper and a second opposite surface); a second plate (270, 38k) extending from the forefoot region of the sole structure to the heel region of the sole structure (fig. 55 shows the second plate (270, 38k) extending from the forefoot (16) to the heel (20) region, Examiner notes that paragraph [0303] teaches “at least a portion of the outsole 38k may be attached to or formed integrally with the third plate 270,” therein the second plate (270, 38k) can clearly be formed of both structures) and including a third surface opposing the second surface of the first plate, and a fourth surface opposite than the third surface (annotated fig. 55 shows the second plate (270, 38k) having a third surface opposing the second surface and a fourth opposite surface); a heel pad (154k2) extending between a first terminal end (see annotated Fig.) that is disposed in a mid-foot region of the sole structure to a second terminal end (see annotated Fig.) that is disposed in the heel region of the sole structure, such that the first terminal end of the heel pad does not extend into the forefoot region (annotated fig. 57B shows the heel pad extending from a first terminal end in the midfoot region to a second terminal end in the heel region, the heel pad terminating completely in the midfoot region before reaching the forefoot region), the heel pad connecting the first plate and the second plate in the mid-foot region such that the second plate is supported in the mid-foot region (figs. 55 and 57B show the heel pad 154k2 extending between and connecting the first plate (268) and the second plate (270, 38k) in the midfoot region, therein also supporting the second plate (270, 38k) in the midfoot region); a first cushion (190k), extending in a direction from the forefoot region to the heel region (figs. 55 and 56 show the first cushion (190k) extending in a direction from the forefoot to the heel region), wherein a widest part of the first cushion has a first width (fig. 56 shows the widest part of the first cushion having a first width, wherein first cushion is part of arrangement (64k)); a second cushion (194k) extending the direction from the forefoot region to the heel region (figs. 55 and 56 show the second cushion (194k) extending in a direction from the forefoot to the heel region), wherein a widest part of the second cushion has a second width (fig. 56 shows the widest part of the second cushion (194k) having a second width, wherein second cushion is part of arrangement (66k)); a first gap (see annotated Fig.) between the first cushion and the heel pad (annotated fig. 56 shows a first gap between the first cushion (190k) and the heel pad (154k2)); a second gap (see annotated Fig.) between the second cushion and the heel pad (annotated fig. 56 shows a second gap between the second cushion (194k) and the heel pad (154k2)), wherein the first cushion and the second cushion are located in the forefoot region of the sole structure (annotated fig. 56 shows the first (190k) and second (194k) cushions located in the forefoot region); and a third gap (see annotated Fig.) between the first cushion and the second cushion (annotated fig. 56 and 57a shows a third gap between the first and second cushions).
Connell et al. does not teach wherein the second width is different than the first width.
Attention is drawn to Connell2, which teaches an analogous article of footwear. Connell2 teaches a sole structure (14f) for an article of footwear (10f) including an upper (12), the sole structure comprising: a first plate (196) extending from a forefoot region (16) of the sole structure to a heel region (20) of the sole structure (fig. 34 shows the first plate (196) extending from the forefoot (16) to the heel (20) region), the first plate including a first surface (see annotated Fig.) opposing to the upper and a second surface (see annotated Fig.) opposite the first surface (annotated fig. 35 shows the first plate (196) having a first surface opposing the upper and a second opposite surface), a second plate (198) extending from the forefoot region of the sole structure to the heel region of the sole structure (fig. 34 shows the second plate (198) extending from the forefoot (16) to the heel (20) region) and including a third surface (see annotated Fig.) opposing the second surface of the first plate, and a fourth surface (see annotated Fig.) opposite than the third surface (annotated fig. 35 shows the second plate (198) having a third surface opposing the second surface and a fourth opposite surface); a heel pad (see annotated Fig.) extending from a first terminal end (see annotated Fig.) disposed in a mid-foot region of the sole structure to a second terminal end (see annotated Fig.) disposed in the heel region of the sole structure (annotated fig. 35 shows the heel pad extending from a first terminal end in the midfoot region to a second terminal end in the heel region), the heel pad connecting the first plate (196) and the second plate (198) in the mid-foot region such that the second plate is supported in the mid-foot region (figs. 34 and 35 shows the heel pad extending between and connecting the first plate (196) and the second plate (198) in the midfoot region, therein also supporting the second plate (198) in the midfoot region), wherein a portion of the heel pad extends along an outer side surface of the upper (fig. 34 shows the heel pad extending along an outer side surface of the upper (12) such as to cover the strobel seam (as shown in fig. 35)); a first cushion (188f), extending in a direction from the forefoot region to the heel region (figs. 35 and 37 show the first cushion (188f) extending in a direction from the forefoot to the heel region), wherein a widest part of the first cushion has a first width (fig. 37 shows the widest part of the first cushion having a first width, wherein first cushion is part of arrangement (64f)); and a second cushion (192f) extending the direction from the forefoot region to the heel region (figs. 35 and 37 show the second cushion (192f) extending in a direction from the forefoot to the heel region), wherein a widest part of the second cushion has a second width different than the first width (fig. 37 shows the widest part of the second cushion having a second width being greater than and therein different from the first width, wherein second cushion is part of arrangement (66f)).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Connell et al. to include the teachings of Connell2 such that the second width is different than the first width so as to allow greater cushioning on one side of the wearer’s foot than the other in order to support specific motion of the wearer’s foot during the gait cycle.
Regarding Claim 22, Connell et al. teaches all of the limitations of the sole structure of Claim 21, as discussed in the rejections above. Connell et al. further teaches wherein the first cushion (190k) is attached to the second surface of the first plate (268) and to the third surface of the second plate (270, 38k), and the second cushion (192k) is attached to the second surface of the first plate and to the third surface of the second plate (annotated fig. 55 and fig. 57A show the first (190k) and second (194k) cushions attached to the second surface of the first plate (268) and the third surface of the second plate (270, 38k)).
Regarding Claim 25, Connell et al. teaches all of the limitations of the sole structure of Claim 21, as discussed in the rejections above. Connell et al. further teaches wherein the first cushion (190k) is disposed primarily on a medial side (22) of the sole structure, and the second cushion (194k) is disposed primarily on a lateral side (24) of the sole structure (fig. 57A shows the first cushion (190k) disposed on a medial side (22) and the second cushion (194k) disposed on a lateral side (24)).
Regarding Claim 26, Connell et al. teaches all of the limitations of the sole structure of Claim 21, as discussed in the rejections above. Connell et al. further teaches wherein at least one of the first cushion (190k) or the second cushion (194k) is a fluid-filled bladder (paragraph [0308] teaches “a second fluid-filled chamber 190k … a fourth fluid-filled chamber 194k”).
Regarding Claim 27, Connell et al. teaches all of the limitations of the sole structure of Claim 21, as discussed in the rejections above. Connell et al. further teaches at least one traction element (55) extending from the second plate (270, 38k) (fig. 56 shows the traction element (55) extending from the second plate (270, 38k).
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Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Connell et al. (US 2018/0213886) in view of a third embodiment of Connell et al., hereinafter referred to as Connell3.
Regarding Claim 7, Connell et al. teaches all of the limitations of the sole structure of Claim 1 as discussed in the rejections above.
Connell et al. does not teach wherein the first cushion and the second cushion have an about rectangular shape.
Attention is drawn to Connell3, which teaches an analogous sole structure for an article of footwear. Connell3 teaches a sole structure (14) for an article of footwear (10) including an upper (12), the sole structure comprising: a first plate (36) extending from a forefoot region of the sole structure to a heel region of the sole structure, the first plate including a first surface opposing to the upper and a second surface opposite the first surface (annotated fig. 2 shows the first plate (36) extending from the forefoot to the heel region and having a first surface opposing the upper and a second opposite surface), a second plate (58) including a third surface (60) opposing the second surface of the first plate, and a fourth surface opposite than the third surface (annotated fig. 2 shows the third surface (60) opposing the second surface and an opposite fourth surface); a first cushion (68), extending in a direction from the forefoot region to the heel region; and a second cushion (88) extending the direction from the forefoot region to the heel region (fig. 2 shows the first (68) and second (88) cushions extending in a direction from the forefoot to the heel region). Connell2 further teaches wherein the first cushion and the second cushion have an about rectangular shape (fig. 7 shows the first (68) and second (88) cushions having an about rectangular shape).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Connell et al. with the teachings of Connell3 such that the first cushion and the second cushion have an about rectangular shape so as to provide greater shock absorption and cushioning than a rounded cushion having the same width and length, as a rectangular cushion would cover greater surface area leading to the increased functionality. Further in support of this conclusion of obvious, it is noted that In re Daily, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), the court held that the configuration of the claimed disposable plastic nursing container was a matter of choice of which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant (see MPEP § 2144.04 IV).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Connell et al. (US 2018/0213886) in view of Smith et al. (US 2005/0155254).
Regarding Claim 19, Connell et al. teaches all of the limitations of the sole structure of Claim 18 as discussed in the rejections above. Connell et al. further teaches wherein the first cushion (162m) is a fluid-filled bladder and the second cushion (164m) is a fluid-filled bladder (paragraph [0332], “The first fluid-filled chamber 162m and the second fluid-filled chamber 164m”), and wherein the third cushion is foam (fig. 59 shows the third cushion (152m) being part of the midsole (36m), which is made of foam as paragraph [0123] teaches “The midsole 36 may be formed from an energy absorbing material such as, for example, polymer foam,” therein the third cushion is formed of foam).
Connell et al. does not teach wherein the second plate includes one or more detachable traction elements in the forefoot region and one or more molded traction elements in the heel region.
Attention is drawn to Smith et al., which teaches an analogous article of footwear. Smith et al. teaches a sole structure (24) for an article of footwear (10) including an upper (22), the sole structure comprising: a first plate (26) continuously extending from an anterior end to posterior end at a rearmost portion of the sole structure, the first plate including a first surface opposing the upper and a second surface opposite the first surface (fig. 1 shows the first plate (26) extending from an anterior to a posterior end and having a first surface opposing the upper and a second surface opposite the first surface); a second plate (30) extending from a forefoot region of the sole structure to a heel region of the sole structure and including a third surface opposing the second surface of the first plate, and a fourth surface opposite side the third surface, wherein the fourth surface of the second plate is a ground-engaging surface (figs. 1 and 2 show the second plate (30) extending from a forefoot to a heel region and including a third surface opposing the second surface and a fourth opposite surface, the fourth surface being ground engaging); a first cushion (36) attached to the third surface of the second plate; a second cushion (38) attached to the third surface of the second plate (annotated fig. 3 shows the first (36) and second (38) cushions attached to the third surface of the second plate); and a first gap extending between the first cushion and the second cushion (fig. 3 shows a first gap extending between the first (36) and second (38) cushions). Smith et al. further teaches wherein the second plate includes one or more detachable traction elements (50) in the forefoot region (fig. 2 shows the detachable traction elements (50) in the forefoot region (16); paragraph [0028] teaches “Spikes 50 may be fixed and permanently secured to outsole 28 as illustrated in this embodiment, or they may be removably secured to outsole 28, such as by threads”) and one or more molded traction elements (52) in the heel region (fig. 2 shows the molded traction elements (52) in the heel region (20)).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Connell et al. to include the teachings of Smith et al. such that the second plate includes one or more detachable traction elements in the forefoot region and one or more molded traction elements in the heel region so as to give the wearer greater slip resistance and traction while walking and further to allow them to customize their level of traction as needed (paragraph [0028] “Outsole 28 preferably includes a plurality of gripping elements such as spikes 50 and projections 52. The gripping elements provide superior traction for the sprinter as they propel themselves forward from the launch position.”).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, and 7 of U.S. Patent No. 12185789. Although the claims at issue are not identical, they are not patentably distinct from each other because as shown in the table below, the different are minor.
Instant app '853
Patent '789
Claim
Claim
1
A sole structure for an article of footwear including an upper, the sole structure comprising: a first plate extending from a forefoot region of the sole structure to a heel region of the sole structure, the first plate including a first surface opposing to the upper and a second surface opposite the first surface, a second plate extending from the forefoot region of the sole structure to the heel region of the sole structure and including a third surface opposing the second surface of the first plate, and a fourth surface opposite than the third surface; a heel pad extending from a first terminal end disposed in a mid-foot region of the sole structure to a second terminal end disposed in the heel region of the sole structure, the heel pad connecting the first plate and the second plate in the mid-foot region such that the second plate is supported in the mid-foot region, wherein a portion of the heel pad extends along an outer side surface of the upper; a first cushion, extending in a direction from the forefoot region to the heel region, wherein a widest part of the first cushion has a first width; and a second cushion extending the direction from the forefoot region to the heel region, wherein a widest part of the second cushion has a second width different than the first width.
1
A sole structure for an article of footwear including an upper, the sole structure comprising: a first plate extending from a forefoot region of the sole structure to a heel region of the sole structure, the first plate including a first surface opposing and directly attached to the upper and a second surface formed on an opposite side of the first plate than the first surface, wherein the first plate includes a first thickness in the forefoot region and the first plate includes a second thickness in a mid-foot region of the sole structure; a second plate extending from the forefoot region of the sole structure to the heel region of the sole structure and including a third surface opposing the second surface of the first plate and a fourth surface disposed on an opposite side of the second plate than the third surface, the third surface being spaced apart from the second surface to define a cavity between the first plate and the second plate that extends from a medial side of the sole structure to a lateral side of the sole structure between the forefoot region and the heel region, wherein the fourth surface of the second plate is a ground- engaging surface; a heel pad extending from a first terminal end disposed in a mid-foot region of the sole structure to a second terminal end disposed in the heel region of the sole structure, the heel pad connecting the first plate and the second plate in the mid-foot region such that the second plate is directly supported in the mid-foot region, wherein a portion of the heel pad extends along an outer side surface of the upper; a first cushion, having a rectangular shape, extending in a direction from the forefoot region to the heel region, wherein a widest part of the first cushion has a first width; and a second cushion, having a rectangular shape, extending the direction from the forefoot region to the heel region, wherein a widest part of the second cushion has a second width different than the first width.
2
The sole structure of Claim 1, wherein the first cushion is disposed between the first plate and the second plate in the forefoot region.
2
The sole structure of Claim 1, wherein the first cushion is disposed between the first plate and the second plate in the forefoot region.
3
The sole structure of Claim 2, wherein the first cushion is attached to the second surface of the first plate and is attached to the third surface of the second plate.
3
The sole structure of Claim 2, wherein the first cushion is attached to the second surface of the first plate and is attached to the third surface of the second plate.
4
The sole structure of Claim 2, wherein the first cushion is a fluid-filled bladder.
4
The sole structure of Claim 2, wherein the first cushion is a fluid-filled bladder.
5
The sole structure of Claim 4, wherein the second cushion is disposed between the first plate and the second plate.
5
The sole structure of Claim 4, wherein the second cushion is disposed between the first plate and the second plate.
6
The sole structure of Claim 5, wherein the heel pad is disposed between the first cushion and a posterior end of the sole structure.
7
The sole structure of Claim 5, wherein the heel pad is disposed between the first cushion and a posterior end of the sole structure.
7
The sole structure of claim 1, wherein the first cushion and the second cushion have a rectangular shape.
1
a first cushion, having a rectangular shape... And a second cushion, having a rectangular shape
8
The sole structure of claim 1, wherein the first plate has a first thickness in the forefoot region and the first plate has a second thickness in the mid-foot region of the sole structure.
1
wherein the first plate includes a first thickness in the forefoot region and the first plate includes a second thickness in a mid-foot region of the sole structure
9
The sole structure of claim 1, wherein the third surface is spaced apart from the second surface to define a cavity between the first plate and the second plate which extends from a medial side of the sole structure to a lateral side of the sole structure between the forefoot region and the heel region.
1
the third surface being spaced apart from the second surface to define a cavity between the first plate and the second plate that extends from a medial side of the sole structure to a lateral side of the sole structure between the forefoot region and the heel region,
Allowable Subject Matter
Claims 23 and 24 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-9 and 17-27 have been considered but are moot because the new ground of rejection necessitated by amendment. Therefore, see aforementioned rejections for the argued missing limitations.
Regarding the 35 U.S.C. 102 rejection of Claim 1 over Connell et al., Applicant submits that Connell et al. does not teach the first terminal end of the heel pad terminating in the mid-foot region and the heel pad does not extend into the forefoot region. However, such arguments are moot in view of the new grounds of rejection as set forth above over a new embodiment of Connell et al.
Regarding the 35 U.S.C. 102 rejection of Claim 17 over a different embodiment of Connell et al., Applicant submits that Connell et al. does not teach the first and second cushions having concave and convex edges, respectively, that face one another. Examiner disagrees, and submits this limitation is shown in the annotated figure above. Examiner notes that the cushions do not have corresponding convex and concave sides, however submits that there are edges of the cushions that do meet this limitation.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/HALEY A SMITH/Primary Examiner, Art Unit 3732