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 .
Election/Restrictions
Applicant’s election without traverse of Species B in the reply filed on July 14, 2026 is acknowledged. In the reply, Applicant indicated claims 1-4 and 7-8 as reading upon the elected invention. Accordingly, claims 1-8 are currently pending in this application, with claims 5-6 being withdrawn from further consideration. An action on the merits follows.
Drawings
The drawings are objected to because Figs. 2 and 15 each appear to show an improper exploded view. The exploded view should include a bracket or line to show the relationship or order of assembly of various parts.
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.
Specification – Abstract
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because final sentence of the abstract (i.e., “Additionally, a semi-finished product and a multicolor shoe material are provided in the present invention”) contains implied phraseology and should be removed.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Specification – Disclosure
The disclosure is objected to because at [0045], “products10” should read “products 10”.
Appropriate correction is required.
Claim Objections
Claim 3 is objected to because at line 2, “a foot” should read “the foot”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 1-4 and 7-8 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 1 recites the limitation “A multicolor shoe material, comprising” at line 1. The claim and those dependent therefrom then proceed to recite multiple foamed color bodies connected to one another to form the structure of an article of footwear. For example, various connections between the bodies in claims 1-2, a foot receiving space in claim 2, the groove in claim 3, and the upper, sole, and pad in claim 4. Accordingly, it is unclear how the claims can be directed merely to a material instead of the article of footwear or shoe structure recited in the claims. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. It is suggested that the limitation instead read “A shoe formed of a multicolor shoe material, the shoe comprising:” The preambles of the dependent claims should be similarly amended to agree with the suggested language above. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art.
Claim 3 recites the limitation “wherein the first foamed color body is disposed with a groove” at lines 1-2. It is unclear if the limitation is attempting to claim that the first foamed color body includes a groove or is positioned near or alongside some separate groove structure. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. It is suggested that the limitation instead read “wherein the first foamed color body forms a groove”. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art.
Claim 4 recites a number of shoe structures attributed to “the multicolor shoe material” at lines 1-4. As discussed with respect to claim 1 above, it is unclear how the claims can be directed to a material while also positively reciting shoe structure. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. It is suggested that the various shoe structures of the claim instead be associated with a claimed shoe instead of a material (e.g., “a shoe upper of the shoe”, “a shoe sole of the shoe”, “a shoe pad of the shoe”). For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art.
Claim 8 recites the limitation “wherein the multicolor shoe material is selected from a group comprising a shoe outsole, a slipper, and a flat shoe” at lines 1-2. As discussed with respect to claim 1 above, it is unclear how the claims can be directed to a material while also positively reciting shoe structure. The limitation appears to recite a group of types of shoes, not materials. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. It is suggested that the limitation instead read “wherein the shoe is selected from a group comprising a shoe outsole, a slipper, and a flat shoe”. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art.
Claims 2-4 and 7-8 are also rejected for being dependent on a rejected claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 and 7-8, as best can be understood, are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0022451 to Smith et al. (hereinafter, “Smith”), in view of US 2008/0005856 to Hung (hereinafter, “Hung”), in view of US 2015/0223563 to Liebeno et al. (hereinafter, “Liebeno”), and in view of US 2021/0321713 to Busbee (hereinafter, “Busbee”).
Regarding claim 1, Smith teaches a multicolor shoe material, comprising a first foamed color body and a second foamed color body (See Smith, Fig. 12; sandal (310) formed of strap upper (312), i.e., a first body, and outsole (316), i.e., a second body; sandal components can be formed of the same foam material in various colors; [0143]-[0144], [0155]); the multicolor shoe material is defined to have a parting line, wherein the first foamed color body is divided into a first section and a second section by the parting line, and the second foamed color body is divided into a third section and a fourth section by the parting line (See annotated Fig. 12 of Smith below; parting line drawn longitudinally down the middle of the sandal (310) divides the strap upper (312) and outsole (316) into first and second sections and third and fourth sections, respectively; Examiner notes that the term "section" is very broad and merely means "one of several components; a piece" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)); the multicolor shoe material is defined to have a first plane, wherein the first plane is an adhesive interface between the first foamed color body and the second foamed color body (See Smith, Fig. 12; upper strap (312) extends underneath midsole (314) between midsole (314) and outsole (316) to interface with outsole (316) along a first plane; [0144]).
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Annotated Fig. 12 of Smith
That said, although Smith discloses that the upper and sole are bonded together, Smith is silent to wherein the first foamed color body and the second foamed color body are thermally fused with each other.
However, Hung, in a related footwear art, is directed to a foamed sandal having an upper and sole structure integrally formed of the same material (See Hung, Fig. 8; abstract). More specifically, Hung teaches wherein the first foamed color body and the second foamed color body are thermally fused with each other (See Hung, Fig. 8; shoe is formed entirely from EVA material by thermally fusing upper with sole components; [0028]-[0030]).
It would have been obvious for one of ordinary skill in the art at the time of the effective filing date of the invention to thermally fused the components of Smith together as disclosed by Hung for a variety of reasons including for example, but not limited to, to securely and integrally form or bond the components to one another and to give a smooth connection appearance (See Hung, [0012]).
That said, the modified multicolor shoe material of Smith (i.e., Smith in view of Hung, as discussed above) is silent to a density difference between the first section and the second section.
However, Liebeno, in a related footwear art, is directed to a foamed footwear structure having regionalized firmness (See Liebeno, Figs. 5-6; abstract). More specifically, Liebeno teaches a density difference between the first section and the second section (See Liebeno, Figs. 5-6; foam density difference formed between medial and lateral halves of footwear to address pronation; [0055]-[0056]).
It would have been obvious for one of ordinary skill in the art at the time of the effective filing date of the invention to form the medial half of the modified multicolor shoe material of Smith to have a lower density than the lateral half in order to address issues of overpronation (See Liebeno, [0056]). Examiner notes that in the modified multicolor shoe material of Smith discussed above, the upper and sole structure are integrally formed of the same material.
That said, the modified multicolor shoe material of Smith (i.e., Smith in view of Hung and Liebeno, as discussed above) is silent to the density difference being in a range of 1% to 3%.
However, Busbee, in a related footwear art, is directed to foam articles for use in footwear with varying property gradients (See Busbee, Fig. 2; abstract). More specifically, Busbee teaches the density difference being in a range of 1% to 3% (See Busbee, Fig. 8C; footwear material having a property gradient, such as a density gradient, across the material that changes smoothly, i.e., continuously; [0070]).
It would have been obvious for one of ordinary skill in the art at the time of the effective filing date of the invention to form the density difference across the modified multicolor shoe material of Smith to have the continuous, smooth gradient disclosed by Busbee for a variety of reasons including for example, but not limited to, providing a smooth, gradual change in density across the material that is not jarring or distracting to a wearer’s foot (See Busbee, [0070]). As a result of the modification above, the modified multicolor shoe material of Smith (i.e., Smtih in view of Hung, Liebeno, and Busbee) would teach the density difference being in a range of 1% to 3% (the smooth, continuous change in density would include a difference of 1% to 3% along the density gradient).
Regarding claim 2, the modified multicolor shoe material of Smith (i.e., Smtih in view of Hung, Liebeno, and Busbee, as discussed with respect to claim 1 above) further teaches a third foamed color body, wherein the third foamed color body is thermally fused with the first foamed color body (See Smith, Fig. 12; midsole (314) is formed of foam and would be thermally fused with upper strap (312) in the modified multicolor shoe material discuss above; [0143]-[0144]); the first foamed color body has a space for receiving a foot, and the third foamed color body is located in the space for receiving a foot (See Smith, Fig. 12; upper strap (312) forms space for receiving a foot of a hypothetical wearer; midsole (314) is located in said space); the third foamed color body is divided into a fifth section and a sixth section by the parting line (See annotated Fig. 12 of Smith above; parting line drawn longitudinally down the middle of the sandal (310) divides midsole (314) into fifth and sixth sections); a density difference between the fifth section and the sixth section is in a range of 1% to 3% (midsole (314) would have the same smooth, density gradient extending from medial to lateral sides of the sandal as the remainder sandal as a result of the modification discussed above with respect to claim 1); the multicolor shoe material is defined to have a second plane, wherein the second plane is an adhesive interface between the first foamed color body and the third foamed color body (See Smith, Fig. 12; upper strap (312) extends underneath midsole (314) between midsole (314) and outsole (316) to interface with outsole (314) along a second plane; [0144]).
Regarding claim 3, the modified multicolor shoe material of Smith (i.e., Smtih in view of Hung, Liebeno, and Busbee, as discussed with respect to claims 1-2 above) further teaches wherein the first foamed color body is disposed with a groove; the groove is disposed in the space for receiving a foot and surrounds a periphery of the third foamed color body (See Smith, Fig. 12; upper strap (312) forms a groove with midsole (314) and surrounds at least a portion of the periphery of midsole (314)).
Regarding claim 4, the modified multicolor shoe material of Smith (i.e., Smtih in view of Hung, Liebeno, and Busbee, as discussed with respect to claims 1-2 above) further teaches wherein the first foamed color body is a shoe upper of the multicolor shoe material; the second foamed color body is a shoe sole of the multicolor shoe material; the third foamed color body is a shoe pad of the multicolor shoe material (See Smith, Fig. 2; upper strap (312) is an upper of sandal (310); outsole (316) is a sole of sandal (310); midsole (314) is a pad of sandal (310)).
Regarding claim 7, the modified multicolor shoe material of Smith (i.e., Smtih in view of Hung, Liebeno, and Busbee, as discussed with respect to claim 1 above) further teaches wherein the multicolor shoe material is formed by foaming a plurality of unfoamed semi-finished products in different colors (Examiner notes that limitation is a product-by-process limitation; the resulting structure of the prior art, i.e., a shoe, i.e., sandal (310) having colored foam bodies (312, 314, 316), meets the structural requirements of the claim limitation).
Regarding claim 8, the modified multicolor shoe material of Smith (i.e., Smtih in view of Hung, Liebeno, and Busbee, as discussed with respect to claim 1 above) further teaches wherein the multicolor shoe material is selected from a group comprising a shoe outsole, a slipper, and a flat shoe (See Smith, Fig. 12; sandal (310) can be considered a slipper, includes an outsole, and/or can be considered a relatively flat shoe).
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure. US 2013/0036627 to Wan et al.; US 2014/0250720 to Miner et al.; US 2023/0363486 to Jensen; USPN 3,552,039 to Fukuoka; USPN 4,279,049 to Coiquaud; USPN 4,078,321 to Famolare; USPN 4,858,337 to Barma; US 2005/0166423 to Norton; and USPN 6,418,642 to Bigg et al. are each directed to articles of footwear having foamed materials and/or layered upper and sole constructions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R MARCHEWKA whose telephone number is (571) 272-4038. The examiner can normally be reached M-F: 9:00AM-5:00PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CLINTON T OSTRUP can be reached at (571) 272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW R MARCHEWKA/Examiner, Art Unit 3732
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