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 amendment filed March 12, 2026 has been entered. Claims 1-20 remain pending in the application.
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.
Claims 1, 4-11 and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over U. S. Patent Publication 2021/0244128 to Costa in view of U. S. Patent 4,338,826 to Jacoby and U. S. Patent 4,858,478 to Kush.
Referring to Claim 1, Costa teaches an article of footwear (300) comprising:
a pump (400) comprising: a conduit (410A, 410B) defining an inner volume and formed from a flexible material (“an elastomeric, resilient material”), the conduit (410A, 410B) movable between an expanded state and a relaxed state and extending from a first end (end shown in Fig. 14) disposed at a medial side (end shown in Fig. 15) of the article of footwear (300) to a second end disposed at a lateral side of the article of footwear (300) (Figures 14-17B; paragraphs [0063] and [0092]-[0096]).
Costa teaches the conduit (410A, 410B) which extends across the instep region from the later to the medial side of the footwear, as claimed, and further teaches that the pump (400) may be located in the tongue or upper of the footwear (Figures 14-17B; paragraphs [0063] and [0092]-[0096]), Costa also teaches that the pump comprises a pump body (231) which is for example a cylinder or casing with a displacement member (232) disposed therein (paragraph [0066]), but Costa is silent as to the details of the cylinder or casing (231) and the displacement member (232). Jacoby teaches a pump comprising:
a conduit (12) defining an inner volume (inside 12) and formed from a flexible material, the conduit (12) movable between an expanded state and a relaxed state; a coil (44) disposed within the conduit (12) and including an outer diameter that is approximately equal to an inner diameter of the conduit (12), the coil (44) substantially maintaining its outer diameter when the conduit is moved between a relaxed state and an expanded state (Figures 1-3; col. 4 lines 33-65).
It would have been obvious before the invention was effectively filed, to a person having ordinary skill in the art, to make the footwear taught by Costa with the pump casing and displacement member taught by Jacoby, because it has been held that a simple substitution of one known element, the pump casing (outer wall of bellows 12) and displacement member (end wall 14) of Jacoby, for another, the generically recited pump casing (231) and displacement member (232) of Costa, to obtain predictable results, the pumping of air, was an obvious extension of prior art teachings. KSR, 550 U.S. at 419, 82 USPQ2d at 1396, MPEP 2141 III B.
Costa is silent as to an air inlet and Jacoby does not teach a manifold. Kush teaches a pump comprising:
a manifold (wall on right side of Figures that comprises 109, 111-114 and 116-118) in fluid communication with an inner volume (inside 102) and operable to permit fluid to enter the inner volume (inside 102) in a first mode (transition from Fig. 2 to Fig. 1) and expel fluid from the inner volume in a second mode (transition from Fig. 1 to Fig. 2) (Figures 1 and 2; col. 3 lines 16-24 and col. 4 lines 4-44).
It would have been obvious before the invention was effectively filed, to a person having ordinary skill in the art, to make the footwear taught by Costa with the pump manifold taught by Kush in order to control the flow of air both in and out of the pump body and because it has been held that a simple substitution of one known element, the manifold of Kush, for another, the generically recited pump body wall (left side of 231 in Fig. 5) and valve (238) of Costa, to obtain predictable results, control of air in and out of the pump, was an obvious extension of prior art teachings. KSR, 550 U.S. at 419, 82 USPQ2d at 1396, MPEP 2141 III B.
Referring to claim 4, Costa, Jacoby and Kush teach a pump comprising all the limitations of claim 1, as detailed above, but Costa is silent as to the details of the cylinder or casing (231) and the displacement member (232). Jacoby further teaches the pump wherein:
the coil (44) has a helical shape (Figures 1-3; col. 4 lines 33-65).
Referring to claim 5, Costa, Jacoby and Kush teach a pump comprising all the limitations of claim 4, as detailed above, but Costa is silent as to the details of the cylinder or casing (231) and the displacement member (232). Jacoby further teaches the pump wherein:
the coil (44) defines a passageway formed therethrough (Figures 1-3; col. 4 lines 33-65).
Referring to claim 6, Costa, Jacoby and Kush teach a pump comprising all the limitations of claim 5, as detailed above, but Costa is silent as to the details of the cylinder or casing (231) and the displacement member (232). Jacoby further teaches the pump wherein:
the passageway includes a longitudinal axis that is substantially parallel to a longitudinal axis of the coil (44) (Figures 1-3; col. 4 lines 33-65).
Referring to claim 7, Costa, Jacoby and Kush teach a pump comprising all the limitations of claim 1, as detailed above, but Costa is silent as to an air inlet and Jacoby does not teach a manifold. Kush further teaches a pump wherein:
the manifold includes a first valve (116) permitting fluid flow into the inner volume and preventing fluid flow out of the inner volume in the first mode (transition from Fig. 2 to Fig. 1) and a second valve (117) permitting fluid flow out of the inner volume and preventing fluid flow into the inner volume in the second mode (transition from Fig. 1 to Fig. 2) (Figures 1 and 2; col. 3 lines 16-24 and col. 4 lines 4-44).
Referring to claim 8, Costa, Jacoby and Kush teach a pump comprising all the limitations of claim 1, as detailed above, but Costa is silent as to an air inlet and Jacoby does not teach a manifold. Kush further teaches a pump wherein:
at least one of the first valve (116) and the second valve (117) is a check valve (Figures 1 and 2; col. 3 lines 16-24 and col. 4 lines 4-44, wherein both valves are check valves).
Referring to claim 9, Costa, Jacoby and Kush teach a pump comprising all the limitations of claim 1, as detailed above, and Costa further teaches an article of footwear comprising:
an upper (120), the pump (400) extending across an instep region of the upper (120) ({paragraph [0063]).
Referring to claim 10, Costa, Jacoby and Kush teach a pump comprising all the limitations of claim 1, as detailed above, and Costa further teaches an article of footwear comprising:
a sole structure (110, 310) defining a ground-engaging surface (on 114), at least one of the first end (on lateral side) of the pump (400) and the second end (on medial side) of the pump (400) being disposed proximate to the sole structure (110, 310) (Figures 14-17B; paragraphs [0063] and [0092]-[0096]).
Referring to Claim 11, Costa teaches an article of footwear (300) comprising:
an upper (120) (Figures 14-17B; paragraphs [0063] and [0092]-[0096]); and
a pump (400) comprising: a conduit (410A, 410B) defining an inner volume and formed from a flexible material (“an elastomeric, resilient material”), the conduit (410A, 410B) movable between an expanded state and a relaxed state and extending across an instep region of the upper (120) (Figures 14-17B; paragraphs [0063] and [0092]-[0096]).
Costa teaches the conduit (410A, 410B) which extends across the instep region of the upper, as claimed, and further teaches that the pump (400) may be located in the tongue or upper of the footwear (Figures 14-17B; paragraphs [0063] and [0092]-[0096]). Costa also teaches that the pump comprises a pump body (231) which is for example a cylinder or casing with a displacement member (232) disposed therein (paragraph [0066]), but Costa is silent as to the details of the cylinder or casing (231) and the displacement member (232). Jacoby teaches a pump comprising:
a conduit (12) defining an inner volume (inside 12) and formed from a flexible material, the conduit (12) movable between an expanded state and a relaxed state; a coil (44) disposed within a conduit (12) and including an outer diameter that is approximately equal to an inner diameter of the conduit (12), the coil (44) substantially maintaining its outer diameter when the conduit is moved between a relaxed state and an expanded state (Figures 1-3; col. 4 lines 33-65).
It would have been obvious before the invention was effectively filed, to a person having ordinary skill in the art, to make the footwear taught by Costa with the pump casing and displacement member taught by Jacoby, because it has been held that a simple substitution of one known element, the pump casing (outer wall of bellows 12) and displacement member (end wall 14) of Jacoby, for another, the generically recited pump casing (231) and displacement member (232) of Costa, to obtain predictable results, the pumping of air, was an obvious extension of prior art teachings. KSR, 550 U.S. at 419, 82 USPQ2d at 1396, MPEP 2141 III B.
Costa is silent as to an air inlet and Jacoby does not teach a manifold. Kush teaches a pump comprising:
a manifold (wall on right side of Figures that comprises 109, 111-114 and 116-118) in fluid communication with an inner volume (inside 102) and operable to permit fluid to enter the inner volume (inside 102) in a first mode (transition from Fig. 2 to Fig. 1) and expel fluid from the inner volume in a second mode (transition from Fig. 1 to Fig. 2) (Figures 1 and 2; col. 3 lines 16-24 and col. 4 lines 4-44).
It would have been obvious before the invention was effectively filed, to a person having ordinary skill in the art, to make the footwear taught by Costa with the pump manifold taught by Kush in order to control the flow of air both in and out of the pump body and because it has been held that a simple substitution of one known element, the manifold of Kush, for another, the generically recited pump body wall (left side of 231 in Fig. 5) and valve (238) of Costa, to obtain predictable results, control of air in and out of the pump, was an obvious extension of prior art teachings. KSR, 550 U.S. at 419, 82 USPQ2d at 1396, MPEP 2141 III B.
Referring to claim 14, Costa, Jacoby and Kush teach a pump comprising all the limitations of claim 11, as detailed above, but Costa is silent as to the details of the cylinder or casing (231) and the displacement member (232). Jacoby further teaches the pump wherein:
the coil (44) has a helical shape (Figures 1-3; col. 4 lines 33-65).
Referring to claim 15, Costa, Jacoby and Kush teach a pump comprising all the limitations of claim 14, as detailed above, but Costa is silent as to the details of the cylinder or casing (231) and the displacement member (232). Jacoby further teaches the pump wherein:
the coil (44) defines a passageway formed therethrough (Figures 1-3; col. 4 lines 33-65).
Referring to claim 16, Costa, Jacoby and Kush teach a pump comprising all the limitations of claim 15, as detailed above, but Costa is silent as to the details of the cylinder or casing (231) and the displacement member (232). Jacoby further teaches the pump wherein:
the passageway includes a longitudinal axis that is substantially parallel to a longitudinal axis of the coil (44) (Figures 1-3; col. 4 lines 33-65).
Referring to claim 17, Costa, Jacoby and Kush teach a pump comprising all the limitations of claim 11, as detailed above, but Costa is silent as to an air inlet and Jacoby does not teach a manifold. Kush further teaches a pump wherein:
the manifold includes a first valve (116) permitting fluid flow into the inner volume and preventing fluid flow out of the inner volume in the first mode (transition from Fig. 2 to Fig. 1) and a second valve (117) permitting fluid flow out of the inner volume and preventing fluid flow into the inner volume in the second mode (transition from Fig. 1 to Fig. 2) (Figures 1 and 2; col. 3 lines 16-24 and col. 4 lines 4-44).
Referring to claim 18, Costa, Jacoby and Kush teach a pump comprising all the limitations of claim 11, as detailed above, but Costa is silent as to an air inlet and Jacoby does not teach a manifold. Kush further teaches a pump wherein:
at least one of the first valve (116) and the second valve (117) is a check valve (Figures 1 and 2; col. 3 lines 16-24 and col. 4 lines 4-44, wherein both valves are check valves).
Referring to claim 19, Costa, Jacoby and Kush teach a pump comprising all the limitations of claim 11, as detailed above, but Costa is silent as to the details of the cylinder or casing (231) and the displacement member (232), and Jacoby and Kush do not teach a coil that fills the conduit. However, the Applicant has not provided any reason why the size of the coil is critical to the claimed invention, and therefore it would have been obvious before the invention was effectively filed, to a person having ordinary skill in the art, to use a coil that substantially fills the conduit, as an obvious matter of design choice since applicant has not disclosed that different size coils relative to the size of the conduit solve any stated problems or are for any particular purpose, and it appears that the invention would perform equally well with different size coils relative to the size of the conduit.
Referring to claim 20, Costa, Jacoby and Kush teach a pump comprising all the limitations of claim 11, as detailed above, and Costa further teaches an article of footwear comprising:
a sole structure (110, 310) defining a ground-engaging surface (on 114), at least one of the first end (on lateral side) of the pump (400) and the second end (on medial side) of the pump (400) being disposed proximate to the sole structure (110, 310) (Figures 14-17B; paragraphs [0063] and [0092]-[0096]).
Claims 2, 3, 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over U. S. Patent Publication 2021/0244128 to Costa in view of U. S. Patent 4,338,826 to Jacoby, U. S. Patent 4,858,478 to Kush and U. S. Patent 6,287,0958 to Saputo.
Referring to claim 2, Costa, Jacoby and Kush teach a pump comprising all the limitations of claim 1, as detailed above, and Costa teaches the conduit being formed from a flexible material (“an elastomeric, resilient material” such as “latex rubber”), but is silent as to the details of the cylinder or casing (231) and the displacement member (232). Jacoby and Kush are silent as to the material of the coil. Saputo teaches a pump comprising:
a coil formed from a foam material (col. 1 lines 34-46).
It would have been obvious before the invention was effectively filed, to a person having ordinary skill in the art, to make the footwear taught by Costa with the foam material taught by Saputo in order to use a lightweight material (Saputo col. 1 lines 34-46) and since it has been held to be within the general skill of a worker in the art to select 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.
Using the foam coil material taught by Saputo in the pump already taught by Costa, Jacoby and Kush results in the coil being formed from a different material (foam) than the material forming the conduit (latex rubber) as claimed.
Referring to claim 3, Costa, Jacoby and Kush teach a pump comprising all the limitations of claim 1, as detailed above, but are silent as to the material of the coil. Saputo teaches a pump comprising a coil formed from a foam material (col. 1 lines 34-46).
It would have been obvious before the invention was effectively filed, to a person having ordinary skill in the art, to make the pump taught by Costa with the foam material taught by Saputo in order to use a lightweight material (Saputo col. 1 lines 34-46) and since it has been held to be within the general skill of a worker in the art to select 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.
Referring to claim 12, Costa, Jacoby and Kush teach a pump comprising all the limitations of claim 11, as detailed above, and Costa teaches the conduit being formed from a flexible material (“an elastomeric, resilient material” such as “latex rubber”), but is silent as to the details of the cylinder or casing (231) and the displacement member (232). Jacoby and Kush are silent as to the material of the coil. Saputo teaches a pump comprising:
a coil formed from a foam material (col. 1 lines 34-46).
It would have been obvious before the invention was effectively filed, to a person having ordinary skill in the art, to make the footwear taught by Costa with the foam material taught by Saputo in order to use a lightweight material (Saputo col. 1 lines 34-46) and since it has been held to be within the general skill of a worker in the art to select 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.
Using the foam coil material taught by Saputo in the pump already taught by Costa, Jacoby and Kush results in the coil being formed from a different material (foam) than the material forming the conduit (latex rubber) as claimed.
Referring to claim 13, Costa, Jacoby and Kush teach a pump comprising all the limitations of claim 11, as detailed above, but are silent as to the material of the coil. Saputo teaches a pump comprising a coil formed from a foam material (col. 1 lines 34-46).
It would have been obvious before the invention was effectively filed, to a person having ordinary skill in the art, to make the pump taught by Costa with the foam material taught by Saputo in order to use a lightweight material (Saputo col. 1 lines 34-46) and since it has been held to be within the general skill of a worker in the art to select 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 March 12, 2026 have been fully considered but they are not persuasive. The Applicant argues that the tubes 410A and 410B are not part of the pump and therefore the pump of Costa does not extend from a medial side of the article of footwear to the lateral side of the footwear. Remarks 4-5. However, even if the pump only includes module 420, as the Applicant alleges, module 420 extends from the medial side to the lateral side of the article of footwear, along the bottom of the article of footwear. Further, it is disclosed that this pump may also be located in the tongue of the article of footwear. Whether on the top or the bottom of the article of footwear, tubes 410A and 410B as well as module 420 extend from the medial side to the lateral side of the article of footwear. Furthermore, module 420 comprises a conduit 231 (Fig. 5; paragraph [0066]) which combined with Jacoby and Kush as detailed above, teaches the claimed pump.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYAN MATTHEW LETTMAN whose telephone number is (571)270-7860. The examiner can normally be reached Monday-Friday 8am-4pm.
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/BRYAN M LETTMAN/Primary Examiner, Art Unit 3746
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