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 .
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 less 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.
Election/Restrictions
Applicant’s election without traverse of Invention I. Claims 1-17, drawn to an article of footwear in the reply filed on 09/29/2025 is acknowledged.
Claims 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/29/2025.
Claims 1-20 are presented
Claims 18-20 are withdrawn.
The present office action treats claims 1-17 on the merits.
The present office action is a non-final rejection.
Response to Amendment
Applicant’s preliminary amendment of 02/24/2025 is acknowledged.
A replacement Drawings sheet is acknowledged. This replacement sheet is acceptable and is entered.
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.
Claims 2-9 are 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 2 lines 1-2 recites “wherein each of the plurality of layers is defined by a single maximum elongation for said layer” and further recites in line 3 “wherein the first layer has a maximum elongation”. It is not understood how the first layer can have a single maximum elongation as in lines 1-2 and also have yet another maximum elongation as required by line 3 insofar as it is not understood how a given layer can have two maximum elongations wherein one of said maximum elongations is a “single” maximum elongation.
Claim 2 lines 1-2 recites “wherein each of the plurality of layers is defined by a single maximum elongation for said layer” and further recites in line 4 “wherein the second layer has a maximum elongation”. It is not understood how the second layer can have a single maximum elongation as in lines 1-2 and also have yet another maximum elongation as required by line 4 insofar as it is not understood how a given layer can have two maximum elongations wherein one of said maximum elongations is a “single” maximum elongation. For the purpose of applying art, claim 2 limitations are met if a prior art first layer has a maximum elongation in the length direction of the article of footwear and if the prior art second layer has a maximum elongation in the width direction of the article of footwear.
Claims 3-9 are rejected if only because they depend from a rejected claim.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1 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) 2-9, as best understood, and 10-11 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 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.
However, Toronjo teaches an article of footwear comprising an upper (claim 1) wherein a first layer has a maximum elongation in length direction of the article of footwear, and wherein a second layer has a 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 3:
Saburo in view of Baker and Toronjo teach The article of footwear of claim 2, as set forth above.
Saburo further discloses wherein the first layer is an outermost layer (Figs. 1-3) of the plurality of layers.
Regarding claim 4:
Saburo in view of Baker and Toronjo teach The article of footwear of claim 3, as set forth above.
Saburo does not expressly disclose wherein the embroidery stitching pattern is provided by embroidered stitches including a top thread exposed on the outermost layer.
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 outermost layer: “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 Saburo such that the embroidery stitching pattern is provided by embroidered stitches including a top thread exposed on the outermost layer in order to strongly secure the outermost layer to the second layer by providing the strong thread on top of and exposed on the outermost layer.
Regarding claim 5:
Saburo in view of Baker and Toronjo teach The article of footwear of claim 3, as set forth above.
Saburo 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 Saburo 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:
Saburo in view of Baker and Toronjo teach The article of footwear of claim 5, as set forth above.
Saburo 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 Saburo 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:
Saburo in view of Baker and Toronjo teach The article of footwear of claim 3, as set forth above.
Saburo 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 Saburo 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:
Saburo in view of Baker and Toronjo teach The article of footwear of claim 7, as set forth above.
Saburo 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 Saburo 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).
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).
Claim(s) 13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Saburo, JP-09140402-A].
Regarding claim 13:
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; 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 (Figs. 1-3) the sole 2, the upper including at least one composite panel 1, 3 (i.e. the combined 1 and 3) including a plurality of layers 1, 3 that are secured together by a stitch network (the network defined by 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) that defines a pattern of cell units (see annotated Figs. 1-3 – b below; wherein the cell units identified are 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) on the composite panel, each cell unit including a perimeter (as in annotated Figs. 1-3 – b 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) defined along the stitch network and an interior portion (a portion of a cell between grooves 10) that bulges outward (as in annotated Figs. 1-3 – b below and bulging outward from the “grooves...formed by...10 around each...hole[] 6 in the upper skin 1 surface”; para 15) from the perimeter; and
a plurality of gripping portions 7 positioned on the composite panel (Figs. 1-3), each gripping portion 7 arranged on the interior portion of each of a cell unit (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 positioned on the composite panel, each gripping pad arranged on the interior portion of each a cell unit.
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 a plurality of gripping pads positioned on the composite panel, each gripping pad arranged on the interior portion of each a cell unit, 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).
Regarding claim 15:
Saburo teaches The article of footwear of claim 13, as set forth above.
The modified Saburo further meets the limitation wherein the plurality of gripping pads are at least partially embedded (in the same way that gripping portions 7 are at least partially embedded; “fitted into the through-holes 6”; para 14; Figs. 1-3; where, as stated in above addressing of claim 13, Saburo is modified so as to be provided with gripping pads as in Fig. 10a of Saburo; refer to above treatment of claim 13; such that gripping pads of the modified Saburo are at least partially embedded in the same way that gripping portions are at least partially embedded) in an outer layer 1 of the plurality of layers of the at least one composite panel.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Saburo, JP-09140402-A] in view of [de Castro, US 2020/0205525, provided on Applicant’s IDS of 01/03/025].
Regarding claim 14:
Saburo teaches The article of footwear of claim 13, 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).
Claim(s) 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Saburo, JP-09140402-A] in view of [Toronjo, US 2020/0196707].
Regarding claim 16:
Saburo teaches The article of footwear of claim 13, as set forth above.
Saburo does not expressly disclose wherein the plurality of layers including a resilient layer and a less 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 less resilient 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 less resilient layer 110 (wherein said layer 110 is less resilient than layer 120 in that 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 less resilient 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 less 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 less resilient 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 layers, as suggested by Toronjo (para 39).
Regarding claim 17:
Saburo in view of Toronjo teach The article of footwear of claim 13, as set forth above.
Saburo further discloses wherein the stitch network is an embroidery stitch network provided by embroidered stitches (“sewing...sewing threads”; para 9; “sewing...in the vertical and horizontal directions”; para 14).
(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)
Saburo 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 Saburo 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.
Conclusion
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/GRADY ALEXANDER NUNNERY/Examiner, Art Unit 3732
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