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
Applicant’s amendment of 05/12/2026 is acknowledged.
Claims 1-20 are presented
Claims 2-3, 13, and 15-16 are amended.
Claims 18-20 remain withdrawn.
The present Office action treats claims 1-17 on the merits.
The present Office action is a final rejection.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the
each of the gripping pads is partially embedded in the outermost layer of claim 3
each of the gripping pads is embedded in the outer layer of claim 15
second layer that is less resilient than the resilient layer of claim 16
must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 15 is 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 15 recites “gripping pads form protrusions that extend outwardly from an outer layer of the plurality of layers”. However, claim 13, upon which claim 15 depends, recites “a plurality of gripping pads positioned on an outermost layer of the composite panel” such that it is not clear whether and how “an outer layer of the plurality of layers” of claim 15 further limits the “outermost layer of the composite panel” of claim 13. For the purpose of applying art, claim 15 is interpreted as if the phrase “wherein the plurality of gripping pads form protrusions that extend outwardly from an outer layer of the plurality of layers of the at least one composite panel, and wherein each of the gripping pads is embedded in the outer layer” reads instead --wherein the plurality of gripping pads form protrusions that extend outwardly from the outermost layer, and wherein each of the gripping pads is embedded in the outermost layer--
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Spreng, US 4,393,605, newly cited] in view of [Doremus, US 2018/0184760, newly cited].
Regarding claim 13:
Spreng discloses (Figs. 1-8):
An article of footwear 10 comprising:
a sole 13; and
an upper (“upper”; col. 2 line 35; no specific numeral is provided for the upper; element(s) thereof identified hereinbelow) connected to the sole (Figs. 1-4 and 7-8), the upper including at least one composite panel (the “two plys of leather or fabric between which a filling material...is placed”; col. 2 lines 48-49) including a plurality of layers (i.e. the two plies of leather or fabric and the filling material) that are secured together by a stitch network (“stitching”; col. 2 line 48) that defines a pattern of cell units (see annotated Fig. 2 – a below) on the composite panel, each cell unit including a perimeter (see annotated Fig. 2 – a below) defined along the stitch network and an interior portion (see annotated Fig. 2 – a below) that bulges outward from the perimeter (as in Fig. 2).
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Spreng does not expressly disclose a plurality of gripping pads positioned on an outermost layer of the composite panel, each gripping pad arranged on the interior portion of a cell unit.
Doremus teaches a shoe 100 appropriate for sports (para 28) wherein a plurality of gripping pads 140 is positioned on (para 60; Figs. 7-8) outermost layer 210 of a composite panel 200, 210 (i.e. the combined 200 and 210 being a composite panel).
Doremus further teaches a control surface 150 formed by gripping pads 140 “may be used to enhance traction and/or ball control. Specifically, in some embodiments, when compared with the traction properties of surface layer 130 of upper 102, control surface 150 may provide increased traction with a ball or other object” (para 39) and as a control surface layer 220 formed by gripping pads 140 (para 60) is configured “to achieve desirable performance features such as a desired degree of surface friction with a ball, constant friction in dry and wet conditions, desired degree of compressibility upon contact with a ball” (para 64).
Though Doremus does not describe arranging a gripping pad on an interior portion of a cell unit, a person of ordinary skill would conclude that the “spacing between adjacent protruding elements 140” (para 49 of Doremus) as drawn in the forefoot region 10 thereof (Figs. 1-2 and 4-7 of Doremus) combined with the “diameters” of the gripping pads 140 being “on order of 0 to a few millimeters” (para 41 of Doremus) is such that providing a similar control surface onto the “toe cap” of Spreng (col. 2 line 42 of Spreng) comprising the cell units of Spreng (see above annotated Fig. 2 – a, each one having a “width...between 0.8 to 1.5 cm”; col. 3 lines 8-9 of Spreng) would be expected to result in at least one gripping pad of the control surface arranged on the interior portion of each cell unit.
It 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 to have modified the article of footwear of Spreng such that it is provided with a control surface comprising gripping pads as in Doremus wherein a plurality of gripping pads of said control surface is positioned on an outermost layer of the composite panel, each gripping pad arranged on the interior portion of a cell unit in order to provide increased ball traction, provide a desired degree of surface friction with a ball, provide constant friction in dry and wet conditions, and/or provide desired degree of compressibility upon contact with a ball for a wearer engaged in a sport that involves contact of the upper with a ball, as suggested by Doremus (paras 39 and 64), in the toe cap area thereof including within the interior portion of each cell unit of the toe cap area.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Spreng, US 4,393,605] and [Doremus, US 2018/0184760] as applied to claim 13 above, and further in view of [de Castro, US 2020/0205525, provided on Applicant’s IDS of 01/03/2025].
Regarding claim 14:
Spreng in view of Doremus teach The article of footwear of claim 13, as set forth above.
The modified Spreng does not meet the limitation wherein the gripping pads are comprised of silicone.
However, de Castro teaches an article of footwear (Abstract) comprising a gripping pad ("22... gripping layer"; para 21) comprised of silicone: "Suitable materials for use as a first layer 22 include silicone including high-gloss silicone"; para 21.
de Castro further teaches "The outer surface of the first layer 22 is made of a material having a first friction coefficient. The shoe itself has a second friction coefficient. The first friction coefficient exceeds the second friction coefficient...the player proceeds to enjoy the higher coefficient of friction associated with the first layer 22. The grip provided by this additional friction promotes easier ball handling and promotes exploitation of the Magnus effect" (paras 21; 27)
It 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 to have modified the modified
Spreng such that its gripping pads are comprised of silicone in order to promote easier ball handling and/or promote exploitation of the Magnus effect, as taught by de Castro (paras 21; 27).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Spreng, US 4,393,605] and [Doremus, US 2018/0184760] as applied to claim 13 above, and further in view of [Burris, US 2005/0016023, newly cited].
Regarding claim 15:
Spreng in view of Doremus teach The article of footwear of claim 13, as set forth above.
The modified Spreng further meets the limitation wherein the plurality of gripping pads form protrusions that extend outwardly from an outer layer of the plurality of layers of the at least one composite panel (as evidenced by their being positioned on the outermost layer as explained above in addressing claim 13 and in the same way that gripping pads 140 form protrusions that extend outwardly from outermost layer 210 of Doremus; see Fig. 7 and para 60 of Doremus).
The modified Spreng does not meet the limitation wherein each of the gripping pads is embedded in the outer layer.
However, Burris teaches an article of footwear (Abstract) wherein a gripping pad 42 (42 forms “an exterior surface of the upper” (para 10) and is configured to “catch upon” a “skateboard” and “assist with moving or positioning the skateboard” (para 43) such that it is a gripping pad) wherein the gripping pad 42 is positioned on an outermost layer (i.e. on layer 41) and is embedded in the outer layer (“resin...infiltrates...layer 41 and cures, thereby securing” the gripping pad “42 to” outermost “layer 41” (para 37); “resin...infiltrate substrate layer 41, which may be a textile. Accordingly,...resin...extends around the various filaments and fibers that form substrate layer 41, as depicted in the cross-section of FIG. 9” (para 46).
It 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 to have modified the modified Spreng such that each of the gripping pads is embedded in the outermost layer in order to secure each gripping pad to the outer layer via infiltration of gripping pad material into material of the outermost layer, as suggested by Burris (paras 37 and 46).
Claim(s) 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Spreng, US 4,393,605] and [Doremus, US 2018/0184760] as applied to claim 13 above, and further in view of [Toronjo, US 2020/0196707, previously cited].
Regarding claim 16:
Spreng in view of Doremus teach The article of footwear of claim 13, as set forth above.
Spreng does not expressly disclose wherein the plurality of layers including a resilient layer and a second layer that is less resilient than the resilient layer, the resilient layer having four-way stretch capabilities such that the resilient layer is configured to expand from a contracted state to a stretched state, and the second layer coupled to the resilient layer by the stitch network such that each cell unit defines a bulge in the composite panel when the resilient layer is in the contracted state and a height of said bulge is reduced when the resilient layer is in the stretched state.
However, Toronjo teaches an article of footwear 20 comprising an upper 40 wherein a plurality of layers includes a resilient (“resilient”; para 39) layer 120 and a second layer 110 that is less resilient than the resilient layer (wherein second layer 110 is less resilient than layer 120 in that second layer 110 has a “maximum elongation/stretch of the first layer 110 in the length direction 60 is less than 50%, and preferably less than 30%. In at least one embodiment, the stretch of the first layer 110 in the length direction is 10% or less. Because the first layer 110 is a two-way stretch material, the stretch in the width direction 80 is significantly limited (e.g., less than 5%” (para 38), while the resilient layer 120 has “maximum elongation of the second layer 120 is at least 100% and preferably 200% or more (e.g., in at least one embodiment, 219%). The stretch of the second layer 120 in the length direction 60 is generally less than the stretch of the second layer 120 in the width direction 80. In at least one embodiment, the stretch of the second layer is at least 50%, and preferably 64% or more”; para 39), the resilient layer 120 having four-way stretch capabilities (para 39) such that the resilient layer 120 is configured to expand from a contracted state (para 7) to a stretched state (para 49), and the second layer 110 coupled to the resilient layer by the stitch network (para 49) such that each cell unit of a plurality of unit cells defines a bulge (“each cell formed by the stitching network...bulges outward”; para 49) in the composite panel when the resilient layer is in the contracted state (as in the contracted state of Fig. 7 and described in para 49) and a height of said bulge is reduced when the resilient layer is in the stretched state (as in the stretched state of Fig. 6 wherein bulge height is reduced relative to bulge height when in the contracted state of Fig. 7).
Toronjo further teaches “Because of the stretch associated with the second layer 120, the second layer 120 provides a resilient layer for the composite material. The second layer 120 possesses high recovery properties. For example, recovery of the second layer 120 in both the length and width directions is greater than 80%, and preferably 90% or more. The second layer 120 is also sufficiently strong such that it controls the movement of the other layers, and particularly the first layer 110. For example, when the second layer 120 elastically recovers (contracts/draws inwardly), all other layers of the composite material 100 should draw inwardly with the second layer 120”; para 39.
It 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 to have modified the modified Saburo such that its plurality of layers is including a resilient layer and a second layer that is less resilient than the resilient layer, the resilient layer having four-way stretch capabilities such that the resilient layer is configured to expand from a contracted state to a stretched state, and the second layer coupled to the resilient layer by the stitch network such that each cell unit defines a bulge in the composite panel when the resilient layer is in the contracted state and a height of said bulge is reduced when the resilient layer is in the stretched state in order to permit elastic recovery of the plurality of layers, as suggested by Toronjo (para 39).
Regarding claim 17:
Spreng in view of Doremus and Toronjo teach The article of footwear of claim 13, as set forth above.
Spreng further discloses wherein the stitch network is an embroidery stitch network provided by embroidered stitches (col. 1 lines 45-48; col. 2 lines 47-53; claims 2-3).
(it is noted the term “embroider” means “To make by means of needlework”; embroider. (n.d.) American Heritage® Dictionary of the English Language, Fifth Edition. (2011). Retrieved October 8 2025 from https://www.thefreedictionary.com/embroider)
Spreng does not expressly disclose the stitch network is an embroidery stitch network provided by embroidered stitches including a top thread exposed on an exterior of the article of footwear.
However and in further view of Toronjo:
Toronjo teaches an embroidery stitching pattern is provided by embroidered stitches including a top thread exposed on an exterior of the article of footwear: “top thread exposed on the outer/first layer 110”; para 34; “stitches that form the strand network are embroidered stitches that include a top thread showing on the outside (i.e., layer 110)”; para 46. Toronjo further teaches the thread has “sufficient tensile strength”; para 34.
It 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 to have modified the modified Spreng such that the embroidered stitches including a top thread exposed on an exterior of the article of footwear in order to strongly secure the most exterior layer to the rest of the plurality of layers by providing the strong thread on top of and exposed on an exterior of the most exterior layer and therefore exposed on an exterior of the article of footwear.
Claim(s) 3-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Spreng, US 4,393,605, newly cited] in view of [Doremus, US 2018/0184760, newly cited], [Toronjo, US 2020/0196707, previously cited], and [Burris, US 2005/0016023, newly cited]
Regarding claim 3:
Spreng discloses (Figs. 1-8):
An article of footwear 10 comprising:
a sole 13 defining a length direction and a width direction of the article of footwear (Figs. 1-8); and
an upper (“upper”; col. 2 line 35; no specific numeral is provided for the upper; element(s) thereof identified hereinbelow) connected to the sole (Figs. 1-4 and 7-8), the upper including at least one panel (the “two plys of leather or fabric between which a filling material...is placed”; col. 2 lines 48-49) having a plurality of layers (i.e. the two plies of leather or fabric) that are secured together by an embroidery stitching pattern (“stitching”; col. 2 line 48), the plurality of layers including a fist layer (one of the “two plys of leather or fabric” arranged outward from a second layer (the other of the “two plys of leather or fabric”), wherein a plurality of cells (see annotated Fig. 2 – b below) are formed on the first layer by the embroidery stitching pattern such that a perimeter (see annotated Fig. 2 – b below) of each cell is defined along the embroidery stitching pattern, and wherein an outer surface of the first layer is buckled (as in Fig. 2) such that an interior portion (see annotated Fig. 2 – b below) defined within the perimeter of each cell bulges outward on the first layer of the upper (as in Fig. 2).
(it is noted the term “embroider” means “To make by means of needlework”; embroider. (n.d.) American Heritage® Dictionary of the English Language, Fifth Edition. (2011). Retrieved October 8 2025 from https://www.thefreedictionary.com/embroider)
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Spreng does not expressly disclose a plurality of gripping pads positioned on the outer surface of the first layer, each of the gripping pads arranged on the interior portion of each of the plurality of cells.
Doremus teaches a shoe 100 appropriate for sports (para 28) wherein a plurality of gripping pads 140 is positioned on (para 60; Figs. 7-8) an outer surface of a first layer 210 of a composite panel 200, 210 (i.e. the combined 200 and 210 being a composite panel).
Doremus further teaches a control surface 150 formed by gripping pads 140 “may be used to enhance traction and/or ball control. Specifically, in some embodiments, when compared with the traction properties of surface layer 130 of upper 102, control surface 150 may provide increased traction with a ball or other object” (para 39) and as a control surface layer 220 formed by gripping pads 140 (para 60) is configured “to achieve desirable performance features such as a desired degree of surface friction with a ball, constant friction in dry and wet conditions, desired degree of compressibility upon contact with a ball” (para 64).
Though Doremus does not describe arranging a gripping pad on an interior portion each of a plurality of cells, a person of ordinary skill would conclude that the “spacing between adjacent protruding elements 140” (para 49 of Doremus) as drawn in the forefoot region 10 thereof (Figs. 1-2 and 4-7 of Doremus) combined with the “diameters” of the gripping pads 140 being “on order of 0 to a few millimeters” (para 41 of Doremus) is such that providing a similar control surface onto the “toe cap” of Spreng (col. 2 line 42 of Spreng) comprising the cells of Spreng (see above annotated Fig. 2 – b, each one having a “width...between 0.8 to 1.5 cm”; col. 3 lines 8-9 of Spreng) would be expected to result in at least one gripping pad of the control surface arranged on the interior portion of each cell.
It 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 to have modified the article of footwear of Spreng such that it is provided with a control surface comprising gripping pads as in Doremus wherein disclose a plurality of gripping pads positioned on the outer surface of the first layer, each of the gripping pads arranged on the interior portion of each of the plurality of cells in order to provide increased ball traction, provide a desired degree of surface friction with a ball, provide constant friction in dry and wet conditions, and/or provide desired degree of compressibility upon contact with a ball for a wearer engaged in a sport that involves contact of the upper with a ball, as suggested by Doremus (paras 39 and 64), in the toe cap area thereof including within the interior portion of each cell of the toe cap area.
Spreng does not expressly disclose wherein each of the plurality of layers is defined by a single maximum elongation for said layer wherein said maximum elongation is oriented in a defined direction, wherein the first layer has the maximum elongation in the length direction of the article of footwear, and wherein the second layer has the maximum elongation in the width direction of the article of footwear.
However, Toronjo teaches an article of footwear comprising an upper (claim 1) wherein each of two of a plurality of layers (i.e. first layer and second layer) is defined by a single maximum elongation for said layer (in length or width directions; claim 1) wherein a first layer has the maximum elongation in length direction of the article of footwear, and wherein a second layer has the maximum elongation in the width direction of the article of footwear (“plurality of layers that are secured together according to a predetermined embroidery stitching pattern, the plurality of layers including a first layer having a maximum elongation in the length direction of the article of footwear, and a second layer having a maximum elongation in the width direction of the article of footwear”; claim 1).
Toronjo further teaches “the first layer 110 is an outer layer provided by a pliant material with excellent flex characteristics. The first layer 110 has a limited two-way stretch, with its maximum elongation (a maximum stretch percentage for the material that does not exceed the elastic limit) oriented along the length direction of the shoe (as illustrated by arrow 60 in FIG. 3). The maximum elongation/stretch of the first layer 110 in the length direction 60 is less than 50%, and preferably less than 30%. In at least one embodiment, the stretch of the first layer 110 in the length direction is 10% or less. Because the first layer 110 is a two-way stretch material, the stretch in the width direction 80 is significantly limited (e.g., less than 5%). When the composite material 100 is configured for use with a shoe requiring significant stability, the first layer 110 will preferably have little to no stretch...The second layer 120 is a resilient...layer for the composite material 100. The second layer 120 is provided by a power mesh material having four-way elastic stretch and recovery, with its maximum elongation oriented along the width direction (as illustrated by arrow 80 in FIG. 3). Thus, it will be recognized that the maximum elongation of the second layer 120 is oriented in a direction that is perpendicular to the maximum elongation of the first layer 110. The maximum elongation of the second layer 120 is at least 100% and preferably 200% or more (e.g., in at least one embodiment, 219%). The stretch of the second layer 120 in the length direction 60 is generally less than the stretch of the second layer 120 in the width direction 80. In at least one embodiment, the stretch of the second layer is at least 50%, and preferably 64% or more. Because of the stretch associated with the second layer 120, the second layer 120 provides a resilient layer for the composite material. The second layer 120 possesses high recovery properties. For example, recovery of the second layer 120 in both the length and width directions is greater than 80%, and preferably 90% or more. The second layer 120 is also sufficiently strong such that it controls the movement of the other layers, and particularly the first layer 110. For example, when the second layer 120 elastically recovers (contracts/draws inwardly), all other layers of the composite material 100 should draw inwardly with the second layer 120” (paras 38-39).
It 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 to have modified the modified Spreng such that each of the plurality of layers is defined by a single maximum elongation for said layer wherein said maximum elongation is oriented in a defined direction, wherein the first layer has the maximum elongation in the length direction of the article of footwear, and wherein the second layer has the maximum elongation in the width direction of the article of footwear in order to impart stability to the shoe and to permit elastic recovery of the combined first and second layers, as suggested by Toronjo (paras 38-39).
The modified Spreng further meets the limitation wherein the first layer is an outermost layer of the plurality of layers (i.e. the outermost of the “two plys of leather or fabric of Spreng), wherein the plurality of gripping pads disposed on the outermost layer form protrusions that extend outwardly from the outermost layer (as evidenced by their being positioned on the first layer as explained above so as to contact a ball and in the same way that gripping pads 140 form protrusions that extend outwardly from outermost layer 210 of Doremus; see Fig. 7 and para 60 of Doremus).
Spreng does not expressly disclose wherein each of the gripping pads is partially embedded in the outermost layer.
However, Burris teaches an article of footwear (Abstract) wherein a gripping pad 42 (42 forms “an exterior surface of the upper” (para 10) and is configured to “catch upon” a “skateboard” and “assist with moving or positioning the skateboard” (para 43) such that it is a gripping pad) wherein the gripping pad 42 is positioned on an outermost layer (i.e. on layer 41) and is partially embedded in the outermost layer (“resin...infiltrates...layer 41 and cures, thereby securing” the gripping pad “42 to” outermost “layer 41” (para 37); “resin...infiltrate substrate layer 41, which may be a textile. Accordingly,...resin...extends around the various filaments and fibers that form substrate layer 41, as depicted in the cross-section of FIG. 9” (para 46).
It 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 to have modified the modified Spreng such that each of the gripping pads is partially embedded in the outermost layer in order to secure each gripping pad to the outer layer via infiltration of gripping pad material into material of the outermost layer, as suggested by Burris (paras 37 and 46).
Regarding claim 4:
Spreng in view of Doremus, Toronjo, and Burris teach The article of footwear of claim 3, as set forth above.
Spreng further discloses wherein the embroidery stitching pattern is provided by embroidered stitches (col. 1 lines 45-48; col. 2 lines 47-53; claims 2-3).
(it is noted the term “embroider” means “To make by means of needlework”; embroider. (n.d.) American Heritage® Dictionary of the English Language, Fifth Edition. (2011). Retrieved October 8 2025 from https://www.thefreedictionary.com/embroider)
Spreng does not expressly disclose the embroidered stitches including a top thread exposed on an exterior of the article of footwear.
However and in further view of Toronjo:
Toronjo teaches an embroidery stitching pattern is provided by embroidered stitches including a top thread exposed on an exterior of the article of footwear: “top thread exposed on the outer/first layer 110”; para 34; “stitches that form the strand network are embroidered stitches that include a top thread showing on the outside (i.e., layer 110)”; para 46. Toronjo further teaches the thread has “sufficient tensile strength”; para 34.
It 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 to have modified the modified Spreng such that the embroidered stitches are including a top thread exposed on an exterior of the article of footwear in order to strongly secure the most exterior layer to the rest of the plurality of layers by providing the strong thread on top of and exposed on an exterior of the most exterior layer and therefore exposed on an exterior of the article of footwear.
Regarding claim 5:
Spreng in view of Doremus, Toronjo, and Burris teach The article of footwear of claim 3, as set forth above.
Spreng does not expressly disclose wherein the maximum elongation of the first layer in the length direction is less than 30% and wherein the maximum elongation of the second layer in the width direction is greater than 100%.
However and in further view of Toronjo:
Toronjo teaches wherein the maximum elongation of a first layer in a length direction is less than 30% and wherein a maximum elongation of a second layer in the width direction is greater than 100%: “the first layer 110 is an outer layer provided by a pliant material with excellent flex characteristics. The first layer 110 has a limited two-way stretch, with its maximum elongation (a maximum stretch percentage for the material that does not exceed the elastic limit) oriented along the length direction of the shoe (as illustrated by arrow 60 in FIG. 3). The maximum elongation/stretch of the first layer 110 in the length direction 60 is...less than 30%. In at least one embodiment, the stretch of the first layer 110 in the length direction is 10% or less. Because the first layer 110 is a two-way stretch material, the stretch in the width direction 80 is significantly limited (e.g., less than 5%). When the composite material 100 is configured for use with a shoe requiring significant stability, the first layer 110 will preferably have little to no stretch...The second layer 120 is a resilient...layer for the composite material 100. The second layer 120 is provided by a power mesh material having four-way elastic stretch and recovery, with its maximum elongation oriented along the width direction (as illustrated by arrow 80 in FIG. 3). Thus, it will be recognized that the maximum elongation of the second layer 120 is oriented in a direction that is perpendicular to the maximum elongation of the first layer 110. The maximum elongation of the second layer 120 is at least 100% and preferably 200% or more (e.g., in at least one embodiment, 219%). The stretch of the second layer 120 in the length direction 60 is generally less than the stretch of the second layer 120 in the width direction 80. In at least one embodiment, the stretch of the second layer is at least 50%, and preferably 64% or more. Because of the stretch associated with the second layer 120, the second layer 120 provides a resilient layer for the composite material. The second layer 120 possesses high recovery properties. For example, recovery of the second layer 120 in both the length and width directions is greater than 80%, and preferably 90% or more. The second layer 120 is also sufficiently strong such that it controls the movement of the other layers, and particularly the first layer 110. For example, when the second layer 120 elastically recovers (contracts/draws inwardly), all other layers of the composite material 100 should draw inwardly with the second layer 120” (paras 38-39).
It 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 to have modified the modified Spreng such that the maximum elongation of the first layer in the length direction is less than 30% and wherein the maximum elongation of the second layer in the width direction is greater than 100% in order to impart stability to the shoe and to permit elastic recovery of the combined first and second layers, as suggested by Toronjo (paras 38-39).
Regarding claim 6:
Spreng in view of Doremus, Toronjo, and Burris teach The article of footwear of claim 5, as set forth above.
Spreng does not expressly disclose wherein the maximum elongation of the first layer in the length direction is less than 10%.
However and in further view of Toronjo:
Toronjo teaches wherein the maximum elongation of a first layer in a length direction is less than 10%: “the first layer 110 is an outer layer provided by a pliant material with excellent flex characteristics. The first layer 110 has a limited two-way stretch, with its maximum elongation (a maximum stretch percentage for the material that does not exceed the elastic limit) oriented along the length direction of the shoe (as illustrated by arrow 60 in FIG. 3). The maximum elongation/stretch of the first layer 110 in the length direction 60 is...less than 30%” and “the stretch of the first layer 110 in the length direction is 10% or less. Because the first layer 110 is a two-way stretch material, the stretch in the width direction 80 is significantly limited (e.g., less than 5%). When the composite material 100 is configured for use with a shoe requiring significant stability, the first layer 110 will preferably have little to no stretch...The second layer 120 is a resilient...layer for the composite material 100. The second layer 120 is provided by a power mesh material having four-way elastic stretch and recovery, with its maximum elongation oriented along the width direction (as illustrated by arrow 80 in FIG. 3). Thus, it will be recognized that the maximum elongation of the second layer 120 is oriented in a direction that is perpendicular to the maximum elongation of the first layer 110. The maximum elongation of the second layer 120 is at least 100% and preferably 200% or more (e.g., in at least one embodiment, 219%). The stretch of the second layer 120 in the length direction 60 is generally less than the stretch of the second layer 120 in the width direction 80. In at least one embodiment, the stretch of the second layer is at least 50%, and preferably 64% or more. Because of the stretch associated with the second layer 120, the second layer 120 provides a resilient layer for the composite material. The second layer 120 possesses high recovery properties. For example, recovery of the second layer 120 in both the length and width directions is greater than 80%, and preferably 90% or more. The second layer 120 is also sufficiently strong such that it controls the movement of the other layers, and particularly the first layer 110. For example, when the second layer 120 elastically recovers (contracts/draws inwardly), all other layers of the composite material 100 should draw inwardly with the second layer 120” (paras 38-39).
It 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 to have modified the modified Spreng such that the maximum elongation of the first layer in the length direction is less than 10% in order to impart stability to the shoe and to permit elastic recovery of the combined first and second layers, as suggested by Toronjo (paras 38-39).
Regarding claim 7:
Spreng in view of Doremus, Toronjo, and Burris teach The article of footwear of claim 3, as set forth above.
Spreng does not expressly disclose wherein the second layer is a resilient layer.
However and in further view of Toronjo:
Toronjo teaches a second layer is a resilient layer: “The second layer 120 is a resilient middle layer for the composite material 100. The second layer 120 is provided by a power mesh material having four-way elastic stretch and recovery, with its maximum elongation oriented along the width direction (as illustrated by arrow 80 in FIG. 3). Thus, it will be recognized that the maximum elongation of the second layer 120 is oriented in a direction that is perpendicular to the maximum elongation of the first layer 110. The maximum elongation of the second layer 120 is at least 100% and preferably 200% or more (e.g., in at least one embodiment, 219%). The stretch of the second layer 120 in the length direction 60 is generally less than the stretch of the second layer 120 in the width direction 80. In at least one embodiment, the stretch of the second layer is at least 50%, and preferably 64% or more. Because of the stretch associated with the second layer 120, the second layer 120 provides a resilient layer for the composite material. The second layer 120 possesses high recovery properties. For example, recovery of the second layer 120 in both the length and width directions is greater than 80%, and preferably 90% or more. The second layer 120 is also sufficiently strong such that it controls the movement of the other layers, and particularly the first layer 110. For example, when the second layer 120 elastically recovers (contracts/draws inwardly), all other layers of the composite material 100 should draw inwardly with the second layer 120”; para 39.
It 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 to have modified the modified Spreng such that the second layer is a resilient layer in order to permit elastic recovery of the combined first and second layers, as suggested by Toronjo (para 39).
Regarding claim 8:
Spreng in view of Doremus, Toronjo, and Burris teach The article of footwear of claim 7, as set forth above.
Spreng does not expressly disclose wherein a recovery of the second layer in both the length direction and the width direction is greater than 80%.
However and in further view of Toronjo:
Toronjo teaches a recovery of a second layer in both the length direction and the width direction is greater than 80%: “Because of the stretch associated with the second layer 120, the second layer 120 provides a resilient layer for the composite material. The second layer 120 possesses high recovery properties. For example, recovery of the second layer 120 in both the length and width directions is greater than 80%, and preferably 90% or more. The second layer 120 is also sufficiently strong such that it controls the movement of the other layers, and particularly the first layer 110. For example, when the second layer 120 elastically recovers (contracts/draws inwardly), all other layers of the composite material 100 should draw inwardly with the second layer 120”; para 39.
It 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 to have modified the modified Spreng such that a recovery of the second layer in both the length direction and the width direction is greater than 80% in order to permit elastic recovery of the combined first and second layers in the length direction and in the width direction, as suggested by Toronjo (para 39).
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Saburo, JP-09140402-A] in view of [Baker, US 2009/0100712].
Regarding claim 1:
Saburo discloses (Figs. 1-3):
An article of footwear (the “shoe” (para 12) of Figs. 1-3; no specific numeral is provided for the entire shoe; elements thereof are identified hereinbelow) comprising:
a sole 2 defining a length direction (see annotated Figs. 1-3 – a below) and a width direction (see annotated Figs. 1-3 – a below) of the article of footwear; and
an upper 1, 3, 5 (i.e. the combined 1, 3, and 5; wherein it is noted elements 7 are portions of 5; para 13; Fig. 7) connected to the sole (Figs. 1-3), the upper including at least one panel having a plurality of layers 1, 3 that are secured together by an embroidery stitching pattern (the “sewing...together” of layers 1 and 3 “in the vertical and horizontal directions (Fig. 2 , Fig. 3)”; (para 14); “sewing the upper skin 1...and the inner 3”; para 15),
(it is noted the term “embroider” means “To make by means of needlework”; embroider. (n.d.) American Heritage® Dictionary of the English Language, Fifth Edition. (2011). Retrieved October 8 2025 from https://www.thefreedictionary.com/embroider)
the plurality of layers including a first layer 1 arranged outward from a second layer 3, wherein a plurality of cells (see annotated Figs. 1-3 – a below) are formed on the first layer (Figs. 1-3) by the embroidery stitching pattern such that a perimeter of each cell is defined along the embroidery stitching pattern (as in annotated Figs. 1-3 – a below and coincident with the “grooves...formed by perforations 10 around each of the...holes 6 in the upper skin 1 surface. This groove...to surround each of the protrusions 7”; para 15), and wherein an outer surface (see annotated Figs. 1-3 – a below) of the first layer is buckled (via the “grooves...formed by...10 around each...hole[] 6 in the upper skin 1 surface”; para 15) such that an interior portion (a portion of a cell between grooves 10) defined within the perimeter of each cell bulges outward (as in Fig. 2 and bulging outward from the “grooves...formed by...10 around each...hole[] 6 in the upper skin 1 surface”; para 15) on the first layer 1 of the upper; and
a plurality of gripping portions 7, each of the gripping portions 7 arranged on the interior portion of each of the plurality of cells (interior portion is between grooves 10, and each gripping portion is arranged on the interior portion via being engaged with a through hole 6 and protruding through the through hole 6 as described in para 14 and as is evident in Figs. 1, 2, and 3).
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Saburo Figs. 1-3 does not expressly disclose a plurality of gripping pads, each of the gripping pads arranged on the interior portion of each of the plurality of cells.
Rather, Saburo Figs. 1-3, as stated above, comprises gripping portions 7, which are “integrally formed...on the surface of the cushioning sheet 5” such that each gripping portion 7 is a portion of sheet 5.
However and in further view of Saburo:
Saburo Fig. 10a teaches discrete gripping pads 7 adhered to a surface of a cushioning sheet 5: “It is also possible to use a cushioning sheet formed of foam rubber with protrusions made of solid rubber provided on the surface thereof. In this case, by taking advantage of the characteristics of the hard and highly repulsive solid rubber protrusions and the soft and lightweight foam rubber, the feel and ball controllability when the ball is kicked can be improved. As a specific structure, the solid protrusions 7 may be individually adhered to the surface of the cushioning sheet 5 made of foam rubber, as illustrated in Fig. 10 (a)”; para 20.
It 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 to have modified the article of footwear of Saburo Figs. 1-3 such that it comprises gripping pads each, of the gripping pads arranged on the interior portion of each of the plurality of cells, in order to use solid rubber gripping pads 7 combined with a soft cushioning sheet 5 in order to improve the feel and/or ball controllability when a ball is kicked, as taught by Saburo (para 20).
Thus, although the modified Saburo comprises a plurality of gripping pads, each of the gripping pads arranged on the interior portion of each of the plurality of cells, the modified Saburo does not meet the limitation the plurality of gripping pads disposed on the outer surface of the first layer.
Rather and in Saburo Figs. 1-3, each gripping portion 7 is provided such that each “engages with each through hole 6 opened in the upper shell 1 from the inside, and protrudes to the surface side of the upper shell 1 through the through hole 6” (para 14; Figs. 2-3) and as embodied in Figs. 2-3, each gripping portion 7 appears to project substantially perpendicularly from the outer surface of the first layer 1 in such a way that each gripping portion appears to not be provided on the outer surface as claimed. Fig. 10a only shows gripping pads 7 in relation to cushioning sheet 5 attached thereto and does not show whether or not said gripping pads 7 would be provided on the outer surface as claimed and/or whether they would project substantially perpendicularly from the outer surface of the first layer 1 as appears to be the case for the projection portions 7 of Figs. 2-3.
However, Baker teaches an article of footwear (Abstract) comprising a gripping pad 2120 wherein the gripping pad 2120 is disposed on (Figs. 11-15) an outer surface of a first layer 2440 (Figs. 11-15 and in particular the rightmost view presented in Fig. 12 wherein element 2450 of Fig. 12 is part of first layer 2440 as described in para 73). Baker further teaches the portion of the gripping pad that is disposed on the outer surface—i.e. its “lip 2122” (para 80)—is provided such that “In addition to the ball control elements being received in their respective openings, the lips of the ball control elements can engage portions of the” first layer 2440 “Referring to FIG. 15, first bridge 2450 is received between first ball control element 2110 and second ball control element 2120...lip 2122 can cover portions of first bridge 2450 to secure insert 2100 to article 2400” (para 80).
It 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 to have modified the modified Saburo such that its plurality of gripping pads are disposed on the outer surface of the first layer in order to help secure the gripping pads to the first layer during assembly, as suggested by Baker (para 80), and/or in order to yield the predictable result of an article of footwear whose gripping pads are capable of affording additional gripping via increase surface area of the gripping pads via those portions of the gripping pads that are disposed on the outer layer.
Claim(s) 2 and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Saburo, JP-09140402-A] and [Baker, US 2009/0100712] as applied to claim 1 above and further in view of [Toronjo, US 2020/0196707].
Regarding claim 2:
Saburo in view of Baker teach The article of footwear of claim 1, as set forth above.
Saburo does not expressly disclose wherein each of the plurality of layers is defined by a single maximum elongation for said layer wherein said maximum elongation is oriented in a defined direction, wherein the first layer has the maximum elongation in the length direction of the article of footwear, and wherein the second layer has the maximum elongation in the width direction of the article of footwear.
However, Toronjo teaches an article of footwear comprising an upper (claim 1) wherein each of two of a plurality of layers (i.e. first layer and second layer) is defined by a single maximum elongation for said layer (in length or width directions; claim 1) wherein a first layer has the maximum elongation in length direction of the article of footwear, and wherein a second layer has the maximum elongation in the width direction of the article of footwear (“plurality of layers that are secured together according to a predetermined embroidery stitching pattern, the plurality of layers including a first layer having a maximum elongation in the length direction of the article of footwear, and a second layer having a maximum elongation in the width direction of the article of footwear”; claim 1).
Toronjo further teaches “the first layer 110 is an outer layer provided by a pliant material with excellent flex characteristics. The first layer 110 has a limited two-way stretch, with its maximum elongation (a maximum stretch percentage for the material that does not exceed the elastic limit) oriented along the length direction of the shoe (as illustrated by arrow 60 in FIG. 3). The maximum elongation/stretch of the first layer 110 in the length direction 60 is less than 50%, and preferably less than 30%. In at least one embodiment, the stretch of the first layer 110 in the length direction is 10% or less. Because the first layer 110 is a two-way stretch material, the stretch in the width direction 80 is significantly limited (e.g., less than 5%). When the composite material 100 is configured for use with a shoe requiring significant stability, the first layer 110 will preferably have little to no stretch...The second layer 120 is a resilient...layer for the composite material 100. The second layer 120 is provided by a power mesh material having four-way elastic stretch and recovery, with its maximum elongation oriented along the width direction (as illustrated by arrow 80 in FIG. 3). Thus, it will be recognized that the maximum elongation of the second layer 120 is oriented in a direction that is perpendicular to the maximum elongation of the first layer 110. The maximum elongation of the second layer 120 is at least 100% and preferably 200% or more (e.g., in at least one embodiment, 219%). The stretch of the second layer 120 in the length direction 60 is generally less than the stretch of the second layer 120 in the width direction 80. In at least one embodiment, the stretch of the second layer is at least 50%, and preferably 64% or more. Because of the stretch associated with the second layer 120, the second layer 120 provides a resilient layer for the composite material. The second layer 120 possesses high recovery properties. For example, recovery of the second layer 120 in both the length and width directions is greater than 80%, and preferably 90% or more. The second layer 120 is also sufficiently strong such that it controls the movement of the other layers, and particularly the first layer 110. For example, when the second layer 120 elastically recovers (contracts/draws inwardly), all other layers of the composite material 100 should draw inwardly with the second layer 120” (paras 38-39).
It 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 to have modified the modified Saburo such that its first layer has a maximum elongation in the length direction of the article of footwear, and wherein the second layer has a maximum elongation in the width direction of the article of footwear in order to impart stability to the shoe and to permit elastic recovery of the combined first and second layers, as suggested by Toronjo (paras 38-39).
Regarding claim 9:
Saburo in view of Baker and Toronjo teach The article of footwear of claim 2, as set forth above.
Saburo further discloses wherein the length direction is perpendicular to the width direction (as in the annotated figures presented in above treatment of claim 1).
Regarding claim 10:
Saburo in view of Baker and Toronjo teach The article of footwear of claim 1, as set forth above.
Saburo does not expressly disclose wherein the embroidery stitching pattern defines an auxetic structure.
However, Toronjo teaches an article of footwear comprising an upper (claim 1) wherein an embroidery stitching pattern defines an auxetic structure: “strand network formed by the lines of stitching 92 results in auxetic pattern of reentrant-shaped cell units 90. A reentrant shape may also be referred to as a “concave”, or “non-convex” polygon or shape, which is a shape having an interior angle with a measure that is greater than 180°. Each of the cell units 90 in FIG. 2 is defined by a perimeter having a reentrant shape 96. The reentrant shape 96 includes an interior angle α that possesses a measurement of greater than 180°. Patterns of reentrant shapes are often associated with auxetic structures having a negative Poisson's ratio. In other words, when stretched, auxetic structures tend to expand, becoming thicker (as opposed to thinner), in a direction perpendicular to the applied force. In at least one embodiment, this expansion occurs due to inherent hinge-like configurations within the materials or structures which flex when stretched. In contrast, structures with a positive Poisson's ratio tend to contract (i.e., become thinner) in a direction perpendicular to the applied force. The term “auxetic” as used herein refers to structures or materials that possess or exhibit a negative (below zero) Poisson's ratio at some point during stretch. The term “near auxetic” is used herein to refer to a structure having a Poisson's ratio of approximately zero and, in particular, less than +0.15 (i.e., from about 0 to +0.15)”; para 35.
Toronjo further teaches “The upper, while durable, possesses improved fit because the stretch adapts to the users foot with each cell unit capable of stretching to a desired extent for the given area of the foot. This applies not only when the wearer dons the foot, but as the wearer moves along a surface and various forced are applied to the upper by the foot. The composite is dynamic, adjusting to load conditions as the user moves, but does not expand beyond the lockout limits defined by the auxetic structure of the cell units...In other words, the panel enables dynamic expansion of the upper during use (e.g., during a sporting activity), with the auxetic structure...capable of expanding until the point of lockout, as explained above”; para 52.
It 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 to have modified the modified Saburo such that the embroidery stitching pattern defines an auxetic structure in order to provide improved fit when donning the article of footwear and/or to provide improved fit when the wearer moves along a surface and various forced are applied to the upper by the foot, as taught by Toronjo (para 52).
Regarding claim 11:
Saburo in view of Baker and Toronjo teach The article of footwear of claim 1, as set forth above.
Saburo does not expressly disclose further comprising a reinforcement layer positioned between the first layer and the second layer, the reinforcement layer configured to delimit a degree of stretch of the second layer.
However, Toronjo teaches an article of footwear comprising an upper (claim 1) comprising a first layer (“outer layer”; para 6) and a second layer (“resilient base layer”; para 6) further comprising a reinforcement layer (“reinforcement layer”; para 6) positioned between the first layer and the second layer (para 6), the reinforcement layer configured to delimit a degree of stretch of the second layer (para 6).
Toronjo further teaches “The upper, while durable, possesses improved fit because the stretch adapts to the users foot with each cell unit capable of stretching to a desired extent for the given area of the foot. This applies not only when the wearer dons the foot, but as the wearer moves along a surface and various forced are applied to the upper by the foot. The composite is dynamic, adjusting to load conditions as the user moves, but does not expand beyond the lockout limits defined by the...any reinforcement layer. In other words, the panel enables dynamic expansion of the upper during use (e.g., during a sporting activity), with the...reinforcement layer capable of expanding until the point of lockout, as explained above”; para 52.
It 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 to have modified the modified Saburo such that if further comprises a reinforcement layer positioned between the first layer and the second layer, the reinforcement layer configured to delimit a degree of stretch of the second layer, in order to provide improved fit when donning the article of footwear and/or to provide improved fit when the wearer moves along a surface and various forced are applied to the upper by the foot, as taught by Toronjo (para 52).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Saburo, JP-09140402-A] and [Baker, US 2009/0100712] as applied to claim 1 above and further in view of [de Castro, US 2020/0205525, provided on Applicant’s IDS of 01/03/2025].
Regarding claim 12:
Saburo in view of Baker teach The article of footwear of claim 1, as set forth above.
Saburo does not expressly disclose wherein the gripping pads are comprised of silicone.
However, de Castro teaches an article of footwear (Abstract) comprising a gripping pad (“22...gripping layer”; para 21) comprised of silicone: “Suitable materials for use as a first layer 22 include...silicone...including high-gloss silicone”; para 21.
de Castro further teaches “The outer surface of the first layer 22 is made of a material having a first friction coefficient. The shoe itself has a second friction coefficient. The first friction coefficient exceeds the second friction coefficient...the player proceeds to enjoy the higher coefficient of friction associated with the first layer 22. The grip provided by this additional friction promotes easier ball handling and promotes exploitation of the Magnus effect” (paras 21; 27)
It 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 to have modified the modified Saburo such that its gripping pads are comprised of silicone in order to promote easier ball handling and/or promote exploitation of the Magnus effect, as taught by de Castro (paras 21; 27).
Response to Arguments
Applicant’s REMARKS of 05/12/2026 are fully considered.
Regarding Objection to the Drawings: Applicant’s arguments are fully considered. Applicant’s claim amendments render the drawing objection as applied in the previous Office action moot. However, the amendments have necessitated new Drawings objections; see objections above.
Regarding Rejections under 35 U.S.C. § 112: Applicant’s arguments are fully considered and are persuasive. Specifically: upon review of the amended claims and Applicant’s remarks (p. 8 lines 4-8 of the reply of 05/12/2026), and upon further review of the disclosure as filed: the 35 USC 112 rejections as applied in the previous Office action are overcome. It is noted the amendment has necessitated a new 35 USC 112 rejection; see above.
Applicant’s arguments with respect to the 35 USC 103 rejections of claim(s) 13 and claims dependent thereon (see p. 18-19 and those arguments directed to claims 14-17 on p. 20) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s arguments directed to the 35 USC 103 rejections of claims 1-2 and 9-12 (p. 9-17 and 20 of the reply) are fully considered but they are not persuasive.
Applicant argues:
IV. The Rejection of Independent Claim 1 Under 35 U.S.C. 4 103 Should be Withdrawn
Originally filed independent claim 1 was rejected in the Office Action under 35 U.S.C. § 103 as being unpatentable over Saburo in view of Baker. Applicant respectfully traverses this rejection as (A) the proposed combination of Saburo and Baker does not arrive at the claimed invention, and (B) there is no rationale to modify Saburo in view of Baker.
A. Saburo and Baker do not Arrive at the Claimed Invention
It is respectfully submitted that the proposed combination of Saburo and Baker does not arrive at the claimed invention. In particular, neither Saburo nor Baker disclose the claimed "plurality of gripping pads disposed on the outer surface of the first layer," as set forth in independent claim 1. As described in the specification of the present application, and as shown in the annotated version of figure 1 provided below, the disclosed article of footwear (20) in the present application includes an upper (40) formed by a stitch network with a plurality of cell units. Each cell unit (90) includes (i) a perimeter defined along the stitch network and (ii) an interior portion arranged within the perimeter, the interior portion formed from bulges (94) that extend outwardly from the stitching (92) along the perimeter. Gripping pads (155) are positioned on the outer surface of the bulge (94) of each cell unit (90) (i.e., on the interior portion of the cell unit), wherein each gripping pad (155) has a relatively high friction surface as compared to the outer surface of the composite panel (42). Each pad (155) is provided by a protuberance of material that extends outwardly on the outer layer of the upper (40). In at least one alternative embodiment, each gripping pad (155) is made of a tackifying ink, or the like. The tackifying ink may be applied to composite panel using any of various techniques, including a screen-printing process.
It is respectfully submitted that neither Saburo nor Baker, alone or in combination, disclose all of the limitations of independent claim 1. For example, neither Saburo nor Baker disclose the claimed "plurality of gripping pads disposed on the outer surface of the first layer" as set forth in independent claim 1.
As noted at pages 5-6 of the Office Action, Saburo discloses a soccer shoe including an upper comprised of a plurality of layers with gripping pads formed by protrusions exposed on an outer shell of the shoe. The Office's annotated version of the figures of Saburo is reproduced below for the convenience of the Office. As shown in the figures, the protrusions (7) extend from a cushioning sheet (5) that is arranged behind/under the outer shell (1) that protects the cushioning sheet (5). The protrusions (7) extend through a plurality of holes (6)
formed in the outer shell (1). The outer shell (1) is connected to the upper by embroidery stitching that forms perforations (10) in the outer shell (1) and couples the outer shell (1) and the cushioning sheet (5) to the upper. The perforations extend around each hole (6) and the associated protrusion (7) such that each protrusion is arranged within an outwardly bulging "cell." As correctly noted by the Office at page 8 of the Office Action, there is no disclosure in Saburo of the protrusions (7) forming gripping pads that are "disposed on the outer surface of the first layer."
In view of the missing limitations of claim 1 in Saburo, at page 8 of the Office Action, the Office argued that figures 11-15 of Baker disclose a gripping pad disposed on the outer surface of a shoe. Applicant respectfully disagrees. An annotated version of Fig. 11 of Baker is shown below. As noted in this figure, an upper (2404) includes a tongue (2440) with a plurality of openings (2410, 2420, 2630). Gripping pads/ball control elements (2110, 2120 and 2130) are disposed on an insert (2100) positioned behind a tongue (2440). The gripping pads (2110, 2120 and 2130) extend through openings (2410, 2420, 2630) in the tongue (2440). Like Saburo, the gripping pads (2110, 2120 and 2130) of Baker are not disposed on the outer surface of the first layer of the shoe. Instead, in Baker, the ball control elements (2110, 2120 and 2130) are all inserted through holes in the tongue (2440) and an outer surface of the upper protects the insert (2100) on which the ball control elements are mounted. Accordingly, Baker suffers from the same deficiencies as Saburo and there is no disclosure in Baker of protrusions forming gripping pads that are "disposed on the outer surface of the first layer."
In view of the foregoing, it is respectfully submitted that even if Saburo and Baker combined as proposed by the Office, the resulting combination would not arrive at the claimed invention. In particular, neither Saburo nor Baker, alone or in combination teach the claimed article of footwear with a "plurality of gripping pads disposed on the outer surface of the first layer" as set forth in independent claim 1. Accordingly, the rejection of independent claim 1 under 35 U.S.C. § 103 should be withdrawn for at least this reason.
Examiner’s reply:
This argument is fully considered and is not persuasive. Applicant argues that in Baker, a gripping pad is not “disposed on the outer surface of the first layer”. However, Figs. 11-15 of Baker show gripping pad 2120 disposed on an outer surface of a first layer 2440, as stated in the rejection of 10/10/2025 and repeated in the present rejection. It is noted the rejection reads, emphases provided by Examiner:
...Baker teaches an article of footwear (Abstract) comprising a gripping pad 2120 wherein the gripping pad 2120 is disposed on (Figs. 11-15) an outer surface of a first layer 2440 (Figs. 11-15 and in particular the rightmost view presented in Fig. 12 wherein element 2450 of Fig. 12 is part of first layer 2440 as described in para 73). Baker further teaches the portion of the gripping pad that is disposed on the outer surface—i.e. its “lip 2122” (para 80)—is provided such that...
(see Office action of 10/10/2025, p. 8 thereof)
The rightmost view presented in Fig. 12 of Baker is reproduced hereinbelow:
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It can be seen from Figs. 11-15 and in particular the rightmost view presented in Fig. 12 of Baker that gripping pad 2120 is disposed “on” an outer surface of first layer 2440.
It is further noted the term “on” is “Used to indicate contact with or extent over (a surface) regardless of position” (on. (n.d.) American Heritage® Dictionary of the English Language, Fifth Edition. (2011). Retrieved August 6 2026 from https://www.thefreedictionary.com/on).
Applicant’s specific argument that “the gripping pads (2110, 2120 and 2130) of Baker are not disposed on the outer surface of the first layer of the shoe. Instead, in Baker, the ball control elements (2110, 2120 and 2130) are all inserted through holes in the tongue (2440)” is therefore not persuasive insofar as gripping pad 2120, while “received in...second opening 2420” (para 79 of Baker) nonetheless is disposed on the outer surface of first layer 2440. In other words, Applicant’s argument appears to be that a given structure cannot both be “inserted through” a “hole[]” and also “disposed on an outer surface” of a “first layer”; however, Baker demonstrates that this is not the case and that a gripping pad 2120 can be both received in an opening and also disposed on an outer surface of a first layer as explained above.
Applicant argues:
B. There is no Rationale to Combine Baker with Saburo The proposed motivation to combine the cited references is insufficient for a number of reasons set forth in MPEP § 2143.01. These reasons include the following: (A) the Office has not provided a clear articulation of the reasons why the claimed invention would have been obvious, and (B) the proposed modification would render the prior art unsatisfactory for its intended purpose, and/or would change the principle of operation of the primary reference. 1. The Office has not clearly articulated sufficient reasons why the claimed invention would have been obvious Pursuant to MPEP 2143, "the key to supporting any rejection under 35 U.S.C. § 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious." In order to establish a prima facie case of obviousness, there must be some suggestion or motivation to combine the reference teachings. MPEP § 2143. A motivation to combine references is required to "prevent the use of hindsight based on the invention to defeat patentability of the invention." See In re Rouffet, 149 F.3d 1350 (Fed. Cir. 1998). The mere fact that references can be combined or modified does not render the resultant combination obvious unless the prior art also suggests the desirability of the combination and the results would have been predictable to one of ordinary skill in the art. See In re Mills, 916 F.2d 680 (Fed. Cir. 1990); KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538 (2007); MPEP § 2143.01 III.
In the present case, the Office appears to argue that the rationale for combining Baker with Saburo is that the combination would have yielded predictable results. Specifically, at page 8 of the Office Action, the Office stated that it would have been obvious to have modified Saburo as taught by Baker "in order to yield the predictable result of an article of footwear whose gripping pads are capable of affording additional gripping via increased surface area of the gripping pads."
As set forth in MPEP § 2143, "[One] rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art" (emphasis added). However, MPEP § 2143 further states that in order to arrive at a finding that a combination of known elements yielded nothing more than predictable results, it is "important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does ... [and if this finding] cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art" (emphasis added).
In the present case, it is respectfully submitted that the Office Action does not identify any reason that would have prompted a person to combine Baker with Saburo in the way the claimed invention does. First, as noted above in association with the discussion under section IV.A., neither Baker nor Saburo alone or in combination disclose a "plurality of gripping pads disposed on the outer surface of the first layer". Instead, both Saburo and Baker disclose a continuous underlayer with gripping portions that extend through holes in an outer layer. In Saburo, this underlayer is cushioning sheet (5) positioned behind the outer shell (1). In Baker, this underlayer is the insert (2100) positioned behind the tongue (2440). In both instances, the gripping pads identified by the examiner are all interconnected and supported by an underlayer that is protected by an outer shell. In neither instance are the gripping pads distinct protuberances that separated from one another and disposed on an outer layer of the article of footwear.
Examiner’s reply:
This argument is fully considered and is not persuasive. Applicant argues that in Baker, a gripping pad is not “disposed on the outer surface of the first layer”. This argument is not persuasive and is addressed hereinabove in the previous “Examiner’s reply” to Applicant’s arguments directed to Baker.
Applicant argues:
Second, there is no reason that would have prompted a PHOSITA to combine the elements of the cited references in order to arrive at the claimed invention. The only motivation provided by the Office for combining Baker with Saburo is that the increased surface area of the gripping pads of Baker would afford additional gripping to Saburo (see page 8 of the Office Action). This argument appears to be that the larger gripping pads of Baker would somehow be advantageous because of their increased surface area. However, there is no proof that this is the case. Indeed, if all of the protuberances of Saburo were substituted with the larger gripping pads of Baker, it is entirely possible that less gripping would be afforded because the tendency of the larger gripping pads would be to provide a single two-dimensional flat surface to contact the ball versus the multiple three-dimensional contact points of Saburo with protuberances capable of bending and actually gripping the ball in a collective manner (i.e., as opposed to merely providing a flat surface area that contacts the ball as in Baker).
In view of the foregoing, it is respectfully submitted that the Office has used Baker in an attempt to suggest that the protuberances of Saburo could be differently configured elements, but the Office does not articulate why the insert of Baker would clearly improve the Saburo in any way. Accordingly, it is respectfully submitted that the Office has not clearly articulated the reasons why one of ordinary skill in the art would have been motivated to combine the cited references at the time of the invention. Instead, the Office has merely suggested that the references could be modified to arrive at the claimed invention. In view of this, it is respectfully submitted that the Office used hindsight based on the invention in an attempt to defeat patentability of the invention. Therefore, the rejection of claim 1 should be withdrawn for at least this reason.
Examiner’s reply:
Applicant’s arguments are fully considered but they are not persuasive.
Applicant’s specific argument that “if all of the protuberances of Saburo were substituted with the larger gripping pads of Baker, it is entirely possible that less gripping would be afforded because the tendency of the larger gripping pads would be to provide a single two-dimensional flat surface to contact the ball versus the multiple three-dimensional contact points of Saburo with protuberances capable of bending and actually gripping the ball in a collective manner (i.e., as opposed to merely providing a flat surface area that contacts the ball as in Baker)” is fully considered and is not persuasive insofar as Saburo expressly teaches size variation of a gripping pad 7: (“diameter of each of the protrusions...3 mm to 8 mm”; para 13) such that a person of ordinary skill would expect a gripping pad to continue to function as a gripping pad if its size were altered. Applicant’s further argument that a modification would result in a “single two-dimensional flat surface to contact the ball versus the multiple three-dimensional contact points of Saburo with protuberances capable of bending and actually gripping the ball in a collective manner (i.e., as opposed to merely providing a flat surface area that contacts the ball as in Baker)” is fully considered but is not persuasive insofar as this argument is not commensurate with the rejection as applied; the rejection does not state that the modification alters “multiple three-dimensional contact points” into a “single two-dimensional flat surface” as argued.
Applicant argues:
2. The proposed modification would render the prior art unsatisfactory for its intended purpose and/or changed the principle of operation There is no motivation to combine Baker with Saburo because the arrangement of Baker would render the article of footwear of Saburo unsatisfactory for its intended purpose. As set forth in MPEP § 2143.01 V., "if a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification." In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984). Similarly, as set forth in MPEP § 2143.01 VI., "If the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious." In re Ratti, 270 F.2d 810 (CCPA 1959).
As discussed previously herein, Baker discloses an insert (2100) that can be selectively positioned behind the tongue in order to provide a gripping surface for the article of footwear. The Office proposes using the insert (2100) of Baker in the shoe of Saburo. However, substituting the cushioning sheet (5) of Saburo with the removable insert (2100) of Baker would render Saburo unsatisfactory (or at least change the principle of operation of Saburo) because the embroidery stitching of Saburo could not be used. In other words, if the cushioning sheet (5) of Saburo became removable with larger protrusions (as in Baker), the embroidery stitching that forms perforations (10) in the outer shell (1) of Baker would need to be removed. This would change the principle of operation of Saburo by removing the disclosed "cells" and/or rendering the embroidery stitching of Saburo unsatisfactory for its intended purpose.
Examiner’s reply:
This argument is fully considered but is not persuasive insofar as it is not commensurate with the rejection as applied. The rejection does not “propose[] using the insert (2100) of Baker in the shoe of Saburo” as argued; rather, The rejection states, emphasis provided by Examiner: “It would have been obvious...to have modified the modified Saburo such that its plurality of gripping pads are disposed on the outer surface of the first layer”.
Applicant argues:
Alternatively, in the event the Office proposes removing the cushioning sheet (5) of Saburo that provides the protrusions (7) and substituting the cushioning sheet with the gripping pads/ball control elements (2110, 2120, 2130) of Baker at the center of each cell, this proposed modification would also change the principle of operation of Saburo. The cushioning sheet (5) of Saburo is central to the structure of the article of footwear, with the cushioning sheet providing a cushioning layer that is protected behind the outer shell (1) and also connects each of the protrusions (7) that extend through the holes in the outer shell (1). Removing this cushioning sheet (5) would not only remove an important layer of the upper in Saburo, but would also mean that the protrusions (7) are no longer interconnected and firmly mounted to a sheet that is protected behind the outer shell. As a result, this proposed modification would also change the principle of operation of Saburo. In view of all of the foregoing, it is respectfully submitted that the teachings of the references are not sufficient to render the claims prima facie obvious. Therefore, the rejection of independent claim 1 should be withdrawn for at least this reason.
Examiner’s reply:
This argument is fully considered but is not persuasive insofar as it is not commensurate with the rejection as applied. The rejection does not “propose[] removing the cushioning sheet (5) of Saburo that provides the protrusions (7)”. Saburo Figs. 1-3 comprises gripping portions 7 integrally formed on a surface of cushioning sheet such that each gripping portion 7 is a portion of cushioning sheet 5 in Saburo Figs. 1-3, as stated in the rejection (see p. 5-7 of the Office action of 10/10/2025) and again repeated in the present Office action, and Saburo Fig. 10a teaches discrete gripping pads 7 adhered to a surface of a cushioning sheet 5, as also stated in the rejection (see p. 7 of the Office action of 10/10/2025) and again repeated in the present Office action, and it would have been obvious to have modified Saburo Figs. 1-3 such that it comprises gripping pads combined with a discrete cushioning sheet, as also stated in the rejection (see p. 7 of the Office action of 10/10/2025) and again repeated in the present Office action. The modified Saburo is further modified such that the gripping pads are disposed on the outer surface of the first layer (see p. 7-8 of the Office action of 10/10/2025 and again repeated in the present Office action) such that the rejection does not propose the cushioning sheet be “removed” as argued.
Applicant argues:
Applicant further argues that “dependent claims 2-12...are allowable for at least the same reasons that claim[] 1” is “allowable”. However and in reference to claims 2 and 9-12: Applicant’s arguments are fully considered and are not persuasive insofar as Applicant’s arguments are that claims 2 and 9-12 are allowable based on their dependency from claim 1; however, claim 1 is not allowable, and Applicant’s specific arguments directed to claim 1 are addressed hereinabove. Although the Applicant argues generally the claims “include additional limitations that render the claims novel and non-obvious”, this argument is not persuasive insofar as they amount to a general allegation that the “additional limitations” of claims 2 and 9-12 define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant’s specific arguments directed to claim 3 and claims dependent thereon (i.e. claims 3-8), see p. 20 of the reply of 05/12/2026) are fully considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRADY A NUNNERY whose telephone number is (571)272-2995. The examiner can normally be reached 8-5 M-F.
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/GRADY ALEXANDER NUNNERY/Examiner, Art Unit 3732
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