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 Amendments
The amendments filed with the written response received on 05 February 2026 have been considered. As directed by the amendment, claim(s) 21 and 31 has/have been amended and claim(s) 1-20, 27, and 37 is/are canceled. Accordingly, claim(s) 21-26, 28-36 and 38-40 is/are pending in this application with an action on the merits to follow.
Because of the applicant's amendment, the following in the office action filed 10 November 2025, are hereby withdrawn:
Claim Objections
Rejections under 35 USC 112(b)
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.
Claim(s) 21-26, 28-29-36, and 38-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over a first embodiment of Ours US 4651444 in view of a second embodiment of Ours (hereinafter Ours2).
Regarding Independent Claim 21, Ours discloses a method for manufacturing at least a portion of a shoe (Abstract; Figs. 15-19), the method comprising: providing a flexible sock element (Figs. 15-19 #1c/2c/3c) relative to a mold (Figs. 15-16 #10); injecting a first material (Col. 8:63-69) for forming a reinforcing element (Figs. 16-17 & 19 #26c) to be coupled with the flexible sock element (Col. 9:6-25); and injecting a second material (Figs. 19 #24c) for forming an outsole element (Fig. 19; Col. 9:26-41) to be coupled with the flexible sock element (Fig. 19; Col. 9:4-41), but the first embodiment of Ours does not expressly disclose wherein at least some of the second material for the outsole element is injected into one or more openings in the reinforcing element and establishes mechanical connection between the reinforcing element and the outsole element.
Ours2 teaches a method of manufacturing at least a portion of a shoe (Abstract; Figs. 1-12) wherein at least some of the second material for the outsole element is injected into one or more openings in the reinforcing element (Figs. 1-12 #8) and establishes mechanical connection between the reinforcing element and the outsole element (Figs. 9-11; Col. 5:37-44).
Both Ours and Ours2 teach analogous inventions in the art of manufacturing footwear from the same patent. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Ours with the teachings of Ours2 such that at least some of the second material for the outsole element is injected into one or more openings in the reinforcing element and establishes a mechanical connection between the reinforcing element and the outsole element so that, “In order to provide greater strength and/or in order to ensure water-tightness of certain parts of a shoe, it has already been proposed to manufacture them by providing molded parts of plastic on elements which may be made of leather or any other suitable material and which serve as supports for the molded parts. A design solution of this type has already been proposed with a view to reducing production costs.” (Ours2 Col. 1:17-24).
Regarding Claim 22, the modified method of Ours discloses the method of claim 21, wherein the providing the flexible sock element relative to the mold comprises: positioning the flexible sock element (Fig. 15; Col. 8:42-62); moving a front mold part (Figs. 15-16 #10 left front) and a rear mold part (Figs. 15-16 #10 right rear) each toward the flexible sock element (Fig. 15; Col. 4:32-39, Col. 5:1-6); and moving lateral mold parts (Fig. 7 #10 left/right) each toward the flexible sock element (Col. 4:32-39, Col. 5:1-6).
Regarding Claim 23, the modified method of Ours discloses the method of claim 21, wherein the first material is injected into a space (Figs. 15-16; Col. 8:55) between a mold part (Figs. 15-19 #10/11c/11d) and the flexible sock element (Figs. 15-16).
Regarding Claim 24, the modified method of Ours discloses the method of claim 23, wherein the mold part is a first top mold part (Fig. 7 #11c/11d), wherein the method further comprises: moving the first top mold part away from the flexible sock element (Col. 4:32-39, Col. 5:1-6); and moving a second top mold part (Fig. 7 #11c/11d) toward the flexible sock element (Col. 4:32-39, Col. 5:1-6), wherein the second material is injected into a space (Figs. 15-19 #41/42) between the reinforcing element and the second top mold part (Fig. 16).
Regarding Claim 25, the modified method of Ours discloses the method of claim 21, wherein the reinforcing element is formed to include a reinforcing heel region (Fig. 19 #40), wherein the outsole element is formed to include an outsole heel region (Fig. 19 #24c), and wherein the outsole heel region is formed to fully or partially overlap the reinforcing heel region (Fig. 19).
Regarding Claim 26, the modified method of Ours discloses the method of claim 21, wherein the outsole element is formed to fully or partially overlap the reinforcing element in a region of a sole portion of the flexible sock element (Figs. 15-19).
Regarding Claim 28, the modified method of Ours discloses the method of claim 21, wherein the first material of the reinforcing element is locally injected at different positions (Fig. 17 #8c/9c/38).
Regarding Claim 29, the modified method of Ours discloses the method of claim 21, wherein a geometry of the reinforcing element is determined by a first mold part (Fig. 15 #39 of #10 right/10 left/11c), and wherein a shape of the outsole element is determined by a second mold part (Fig. 16 #42 of #10 right/10 left/11d).
Regarding Claim 30, the modified method of Ours discloses the method of claim 21, wherein the first material and the second material comprise different material properties (Col. 9:4-25), and wherein the second material for the outsole element has a greater hardness (Col. 9:15-17), and/or a greater stiffness (Col. 9:15-17) than the first material for the reinforcing element (Col. 9:4-25). Further, the Examiner notes that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07
Regarding Independent Claim 31, Ours discloses a method for manufacturing at least a portion of a shoe (Abstract; Figs. 15-19), the method comprising: providing a flexible sock element (Figs. 15-19 #1c/2c/3c); injecting a first material (Col. 8:63-69) for forming a first element (Figs. 16-17 & 19 #26c) to be coupled with the flexible sock element (Col. 9:6-25); and injecting a second material (Figs. 19 #24c) for forming a second element (Fig. 19; Col. 9:26-41) to be coupled with the flexible sock element (Fig. 19; Col. 9:26-41), but the first embodiment of Ours does not expressly disclose wherein at least some of the second material for the outsole element is injected into one or more openings in the reinforcing element and establishes mechanical connection between the reinforcing element and the outsole element.
Ours2 teaches a method of manufacturing at least a portion of a shoe (Abstract; Figs. 1-12) wherein at least some of the second material for the outsole element is injected into one or more openings in the reinforcing element (Figs. 1-12 #8) and establishes mechanical connection between the reinforcing element and the outsole element (Figs. 9-11; Col. 5:37-44).
Both Ours and Ours2 teach analogous inventions in the art of manufacturing footwear from the same patent. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Ours with the teachings of Ours2 such that at least some of the second material for the outsole element is injected into one or more openings in the reinforcing element and establishes a mechanical connection between the reinforcing element and the outsole element so that, “In order to provide greater strength and/or in order to ensure water-tightness of certain parts of a shoe, it has already been proposed to manufacture them by providing molded parts of plastic on elements which may be made of leather or any other suitable material and which serve as supports for the molded parts. A design solution of this type has already been proposed with a view to reducing production costs.” (Ours2 Col. 1:17-24).
Regarding Claim 32, the modified method of Ours discloses the method of claim 31, wherein at least one of: the first element is a reinforcing element (Figs. 15-19 #4c; Col. 9:26-41); or the second element is a sole element (Figs. 16-19; Col. 9:4-25).
Regarding Claim 33, the modified method of Ours discloses the method of claim 31, wherein the providing the flexible sock element comprises: positioning the flexible sock element (Fig. 15; Col. 8:42-62); and moving at least two mold parts (Figs. 7 & 15-19 #10/11c/11d) laterally toward the flexible sock element (Col. 4:32-39, Col. 5:1-6).
Regarding Claim 34, the modified method of Ours discloses the method of claim 31, wherein the first material is injected into a space (Figs. 15-16; Col. 8:55) between a mold part (Figs. 15-19 #10/11c/11d) and the flexible sock element (Figs. 15-16).
Regarding Claim 35, the modified method of Ours discloses the method of claim 31, wherein the second material is injected into a space (Figs. 16-19 #41/42) between the first element (Figs. 16-19 #26c/40) and a mold part (Fig. 16 #11d).
Regarding Claim 36, the modified method of Ours discloses the method of claim 31, wherein the second material is arranged such that the second element at least partially overlaps the first element (Fig. 19 shows second element #24c overlapping first element #40).
Regarding Claim 38, the modified method of Ours discloses the method of claim 31, wherein the first material is locally injected at different positions (Fig. 17 #8c/9c/38).
Regarding Claim 39, the modified method of Ours discloses the method of claim 31, wherein a geometry (Fig. 15) of the first element is determined by a first mold part (Fig. 15 #39 of #10 right/10 left/11c), and wherein a shape (Fig. 16) of the second element is determined by a second mold part (Fig. 16 #42 of #10 right/10 left/11d).
Regarding Claim 40, the modified method of Ours discloses the method of claim 31, wherein the first material and the second material comprise different material properties.
Response to Arguments
Applicant’s arguments, filed 05 February 2026, with respect to the 35 USC 102 rejection of claims 21-40 have been considered but are not persuasive.
Regarding the 35 USC 102 rejection of claims 21 and 31, Applicant argues:
The prior art of Ours (and Ours2) does not anticipate the claim limitations of “wherein at least some of the second material for the outsole element is injected into one or more openings in the reinforcing element (Figs. 1-12 #8) and establishes mechanical connection between the reinforcing element and the outsole element” as amended because, “the two injections in this embodiment in Ours are differing layers arranged separated from each other by an intervening sole 4c in the front portion of the shoe and at most merely arranged abutting against each other in a heel portion of the shoe, and the two injections accordingly do not have any features comparable to present claim 21's recitation of “openings in the reinforcing element” into which “at least some of the second material for the outsole element is injected... and establishes mechanical connection between the reinforcing element and the outsole element.” Indeed, Ours instead specifies relying on a different mode of connection between layers, namely relying on similarity between the utilized materials to permit melting together for cohesion… As such, not only does this embodiment of Ours fail to anticipate based on lacking features presently claimed, but the express teaching in Ours of a different solution to the problem of connection between layers also renders this embodiment of Ours an unsuitable basis for any obviousness-type modification toward trying to reach such presently claimed features relating to “openings in the reinforcing element” into which “at least some of the second material for the outsole element is injected... and establishes mechanical connection between the reinforcing element and the outsole element… the Office Action cites to Ours openings 8. However, these openings 8 are arranged to permit injection flow through the sole 4 of the outer slipper 2 that is already formed from leather or other material… and the Ours openings 8 are thus not consistent with the claim 21 recitations,” (Remarks Pgs. 9-12)
The Examiner respectfully disagrees. Claims 21 and 31 require only “A method for manufacturing at least a portion of a shoe, the method comprising: providing a flexible sock element relative to a mold; injecting a first material for forming a reinforcing element to be coupled with the flexible sock element (Col. 9:6-25 notes, “The following operation consists in overmolding a sole of this type with plastic having a higher degree of rigidity than the plastic which is injected between the two slippers 1c and 2c. The same mold can be employed for this operation but the mold block 11c is replaced by a mold block 11d which reserves a space 41 for molding the outsole and another space 42 for molding the body of the heel around the internal core 40 which was formed during the previous operation. Preferably, the plastic material injected during this second operation is of the same nature as the plastic material constituting the sole 4c of the outer slipper 2c. However, the compositions of these materials are such as to produce different degrees of rigidity. Thus the material of the outsole coalesces by melting with the material of the sole 4c of the outer slipper so as to form one piece with this latter”); and injecting a second material for forming an outsole element to be coupled with the flexible sock element (Col. 9:26-41 notes, “This third embodiment has the advantage of making it possible to provide a relatively flexible plastic material between the two slippers 1c and 2c and a rigid material for the formation of the outsole. This also has the advantage of facilitating the attachment of any required accessories to the sole of the shoe such as, for example, an ice skate in the case of a skating boot or studs in the case of a football boot. Furthermore, the strength and rigidity of the sole are further enhanced by the fact that the sole 4c of the outer slipper 2c consists of a molded part of plastic material and that this latter is provided with a peripheral flange 43. A further noteworthy fact is that joining of the upper to the sole is considerably improved by providing the outer slipper 2c with a bottom skirt 45 which is embedded within the molded block 24c which constitutes the heel”), wherein at least some of the second material for the outsole element is injected into one or more openings in the reinforcing element and establishes mechanical connection between the reinforcing element and the outsole element (Col. 5:37-44 notes, “by reason of the presence of the perforations 8 in the sole 4 of the outer slipper, the plastic flows down beneath the sole and fills the internal space which exists between this latter and the mold block 11. The layer of plastic thus poured in this region forms the outsole 23. At the rear end of the shoe, this layer of plastic flows around and encapsulates the packing core 18 so as to form the heel 24 of the shoe”. Thus these limitations are all cohesive elements that work together. See 35 USC 103 rejection above.
Applicant submits that the dependent claims are patentable based on their dependencies from claim(s) 21 and 31; however, as discussed in the rejection and in the arguments above, claim(s) 21 and 31 are not allowable over the prior art. Therefore, these arguments have not been found convincing and the rejections of the independent claims under 35 U.S.C. 102 and/or 103 have been maintained.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAQUEL M. WEIS whose telephone number is 571-272-6804. The examiner can normally be reached Mon-Fri: 0800-1700.
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/RAQUEL M. WEIS/Examiner, Art Unit 3732
/HEATHER MANGINE, Ph.D./Primary Examiner, Art Unit 3732
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