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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 31, 2026 has been entered.
Response to Amendment
The amendments filed with the written response received on March 31, 2026 have been considered and an action on the merits follows. Accordingly, claims 1-3, 15-19, 21-32 are pending in this application, with an action on the merits to follow regarding claims 1-3, 15, 19, 21, and 25-32.
Because of the applicant's filings, the following in the office action filed January 7, 2026, are hereby withdrawn: Double Patenting rejection.
Claim Rejections - 35 USC § 102
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3, 15, 25-26, 28-30, and 32 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dombrow (US 2023/0172313).
Regarding claim 1, Dombrow discloses a golf shoe (10, Figs. 13-17, Examiner notes all statements of intended use such as “golf” (i.e. a shoe for golf) have been fully considered. However, they are deemed to not impose any structural limitations that distinguish over the cited references), comprising: an upper (12) and a sole assembly (14/36) connected to the upper (see Fig. 17), the sole assembly comprising a midsole (36) and an outsole (14); a footbed (38) disposed within an interior region of the upper (see Fig. 16) to support a subject’s foot when the subject’s foot is positioned within the golf shoe (as the footbed would be below the user’s foot when the shoe is worn), an insole (60) component provided below the footbed (see Figs. 16-17); and a support structure (40), wherein the support structure comprises an insert (as 40 itself can be considered an insert) with a rear end portion (portion around 52) that is fixed to the insole at a single attachment point (as it is fixed only at/by plug 66 to the insole 60),
wherein the insert is configured to rotated or pivot about the single attachment point (as 40 is capable of pivoting around 66 similar to how 40 can pivot around 42 in the first embodiment, disclosed in para. 0081 and shown in Figs. 6-8), and a front end portion (portion around 48/50) that is detached or decoupled from the insole component and the footbed (as understood from the first embodiment in para. 0076 and from paras. 0083-0085, the insert is not physically attached to the insole except at 66, and is not attached to the footbed 38, so that it can be selectively installed and removed), wherein the front end of the insert is configured to move or slide relative to the footbed or the insole component during a golf-related action or movement (as 40 is only fixed to 60 by plug 66, and not fixed to the footbed 38, at the front end of 40 is capable of moving or sliding relative to the insole 60 and footbed 38, as disclosed in para. 0083 where it can flex independently and in para. 0080 where it can be cut to achieve desired flexion properties, and in the case of it being cut, it would therefore be smaller than the cavity in which it sits and is therefore capable of at least some sliding/movement).
Regarding claim 3, Dombrow discloses wherein the rear end portion of the insert is offset from a rear end portion of the insole component (as can be seen in Fig. 13, a portion of the support structure extends rearward of where the plug 66 fixes it to the insole 60 but spaced apart from the rear end of 60).
Regarding claim 15, Dombrow discloses wherein the support structure is positioned between the footbed and the insole component (as seen in Figs. 16-17).
Regarding claim 25, Dombrow discloses wherein a first side (lower surface) of the support structure is provided along an upper surface of the insole component (as seen in Figs. 14-17).
Regarding claim 26, Dombrow discloses wherein a second side of the support structure (upper surface) is provided along a lower surface of the footbed (as seen in Fig. 17).
Regarding claim 28, Dombrow discloses wherein the support structure has a width that gradually tapers from a front portion of the support structure to a rear portion of the support structure (as can be seen in Fig. 13, the support structure can be seen as gradually tapering to a front portion of the support structure to a rear portion of the support structure as it can be seen as gradually tapering throughout the middle portion).
Regarding claim 29, Dombrow discloses wherein the support structure has a variable stiffness (as the support structure has a configuration that tapers from a front portion to a rear portion, the configuration, the total stiffness varies throughout the plate similar to Applicant’s, see para. 0213 of the instant application).
Regarding claim 30, Dombrow discloses wherein the support structure has a stiffness that gradually decreases from a front portion of the support structure to a rear portion of the support structure (as the support structure has a configuration that tapers from a front portion to a rear portion, the configuration, the total stiffness varies throughout the plate similar to Applicant’s, see para. 0213 of the instant application such that stiffness would gradually decrease in the middle portion where it tapers from the front portion to the rear portion).
Regarding claim 32, Dombrow discloses wherein the rear end portion of the insert is fixed to the insole component at the single attachment point using a fastener (66) with a circular cross-sectional profile (as can be seen in Figs. 13-14, the cross section of 66 is circular).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dombrow, as applied to claim 1 above, and further in view of Lyden (US 2003/0069807).
Regarding claim 2, Dombrow discloses wherein the rear end portion (around aperture 52, see Fig. 13) of the insert is fixed to the insole component at the single attachment point (via 66), but does not expressly disclose wherein the insert is fixed using a rivet.
Lyden teaches footwear with a sole structure (51) fixed to a sole element by a fastener (29, see paras. 0833-0834) wherein the fastener can be a rivet (such as a snap rivet, see para. 0662).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the fastener of the modified shoe of Dombrow with the fastener as taught by Lyden, as a simple substitution of one well known fastener for another in order to yield the predictable result of securely fastening the support structure and footbed in a releasable and rotatable manner. See MPEP 2143 B and substitution equivalency in para. 0662 of Lyden.
Claim(s) 19, 21, and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dombrow, as applied to claim 1 above, and further in view of Amis (US 2016/0302518).
Regarding claim 19, the modified shoe of Dombrow discloses all the limitations of claim 1 above, but does not expressly disclose further comprising an additional layer of material provided between the support structure and the footbed to promote a sliding movement of the support structure relative to the footbed.
Amis teaches a sole structure further comprising an additional layer of material (134) provided below the footbed (118) to promote a sliding movement of the support structure (132) relative to the footbed (as the material is very low friction, see para. 0024).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add a low friction layer to between the support structure and the footbed of the shoe of Dombrow, as taught by Amis, “to ensure medial and lateral movement” (see para. 0024 of Amis).
When used in combination, as the additional layer of material of Amis is directly below the footbed, it would be between the support structure and the footbed of Dombrow.
Regarding claim 21, the modified shoe of Dombrow discloses all the limitations of claims 1 and 19, but does not expressly disclose wherein the additional layer of material comprises a composite material comprising one or more thermoplastic fibers that are woven and bonded into a polymer matrix. However, Amis discloses the additional layer of material “can be made of any suitable low friction material” and therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a composite material comprising one or more thermoplastic fibers that are woven and bonded into a polymer matrix, as a simple substitution of one well known low friction material for another in order to yield the predictable result of decreasing friction such that the layers can slide. See MPEP 2143 B.
Regarding claim 31, the modified show of Dombrow discloses wherein the additional layer of material is provided along a midfoot portion and a forefoot portion of a bottom or lower surface of the footbed (as the low friction material 134 of Amis covers the entire upper surface of the support structure 132 of Amis, when applied to Dombrow, it would also cover the entire upper surface of the support structure 40 of Dombrow, and thus would be along a midfoot and forefoot portion of the bottom of the footbed 38 of Dombrow, as can be understood from Fig. 13 of Dombrow).
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dombrow, as applied to claim 1 above, and further in view of Farris (US 2018/0140045).
Regarding claim 27, Dombrow discloses all the limitations of claim 1 above, but does not expressly disclose wherein the rear end portion of the insert is fixed to the insole component in a midfoot region of the golf shoe.
Farris teaches a sole structure with varying stiffness wherein the rear end of the insert (28) is fixed (via 32) to a midfoot region (16, see Fig. 1) of the golf shoe (11, as the shoe is capable of being worn during golf).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to shorten the support structure of Dombrow, so that it is fixed in the midfoot region, as taught by Farris, so that bending stiffness remains affected during dorsiflexion, but the heel region won’t be affected thereby allowing the heel of the wearer to remain cushioned and stable.
Response to Arguments
Applicant's arguments filed March 31, 2026, regarding the 35 USC 102 rejection of claim 1, have been fully considered but they are not persuasive. Applicant argues Dombrow fails to meet the limitations of claim 1 because the support structure (40) is of Dombrow is retained in place by the mounting plug, and the slot/protuberance to prevent the forefoot portion of the support structure from moving relative to the midsole and therefore Dombrow does not “disclose, teach, or suggest modifying the shoe so that the front end portion of the insert can move or slide relative to the footbed or the insole component” as recited in claim 1 (Remarks, pages 5-6). Examiner respectfully disagrees and respectfully points out that Applicant also recites, “The flexion plate 40 can flex independently of the adjacent upper and lower midsoles 36 and 38” (Remarks, p. 5, final para.) which is from para. 0073 of Dombrow. Thus, the as the insert can flex independently of 36 and 38, and flexing is a form of movement, then at least a portion of the front end portion of the insert can at least move relative to the footbed or the insole component. The support structure/flexion plate 40 is only physically attached to the insole 60 at the heel with the protuberance 66, and not fixed to the footbed 38, then at least the front end portion is capable of moving relative to the footbed and the insole as it is disclosed as flexing independently, and/or in the case of it being cut (see paras. 0080-0081 of Dombrow), it would therefore be smaller than the cavity in which it sits and is therefore capable of at least some sliding/movement just as the support structure of Applicant’s invention is. Examiner notes Applicant did not amend to distinguish over the prior art of record.
Applicant submits that the dependent claims are patentable based on their dependencies from claim 1; however, as discussed in the rejection below and in the arguments above, claim 1 is not allowable over the prior art. Therefore, these arguments have not been found convincing and the rejections of the dependent claims under 35 U.S.C. 102 and 103 have been maintained.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 HEATHER MANGINE, Ph.D. whose telephone number is (571)270-0673. The examiner can normally be reached Monday-Friday 8AM-4PM.
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/HEATHER MANGINE, Ph.D./ Primary Examiner, Art Unit 3732
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