DETAILED ACTION
This office action is in response to the amendment filed June 23, 2026 in which claims 1-20 are presented for examination.
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 Arguments
Applicant’s First Argument: Objection to claim 7 for informalities should be withdrawn at least in view of current amendments to claim 7.
Examiner’s Response: Agreed. The objection is withdrawn.
Applicant’s Second Argument: Rejections of claims 1-20 under 35 USC 102 and/or 35 USC 103 over cited references should be withdrawn at least in view of current amendments to claim 1.
Examiner’s Response: In view of Applicant’s amendment, the search has been updated and new prior art has been identified and applied. Applicant’s arguments, which appear to be drawn only to the newly amended limitations and previously presented rejections, have been considered but are moot in view of the new grounds of rejection.
Applicant’s Third Argument: Rejections of claims 1-20 for nonstatutory double patenting over cited references should be withdrawn at least in view of the Terminal Disclaimer filed June 23, 2026.
Examiner’s Response: Agreed. The rejections are withdrawn.
Claim Objections
Claim 20 is objected to because of the following informalities: Claim 20 recites “a midsole.” It is unclear how the recited midsole relates to the previously-recited “an insert” (claim 1, line 4). Clarification is required.
Appropriate correction is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-16 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 0,429,429 Eckhardt in view of US Pub No. 2016/0206040 Cross et al.
To claim 1, Eckhardt discloses an article of footwear (see Figures 1-7, reproduced below for convenience; lines 32-67) comprising:
a material (A) that extends below a foot of a wearer when the article of footwear is worn (see Figures 1-3 and 6-7; lines 32-67);
an insert (C,C2) that is connected by at least one of sewing, gluing, or welding to the material (see especially Figures 1 and 5-7; lines 56-67; sewing);
wherein the material comprises at least one opening (A’) (see especially Figures 1-2 and 6-7; lines 32-55);
wherein the insert is formed separately from the material and positioned so that at least a portion of the insert extends through the at least one opening without overlapping an outer surface of the material (see Figures 1-3 and 5-7; lines 32-67); and
wherein at least the portion of the insert that extends through the at least one opening forms at least a part of an outer sole of the article of footwear that contacts the ground when the article of footwear is worn (see especially Figures 1 and 6; lines 32-55).
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Eckhardt is silent as to the composition of material (A), which forms at least a part of an outer sole of the article of footwear.
However, Cross teaches an article of footwear (100,1100) (see especially Figures 1-7 and 17-28; paras. 0042-0063 and 0110-0111) comprising an outer sole (112) wherein a material of the outer sole is a knitted material (paras. 0046-0047).
Eckhardt and Cross teach analogous inventions in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the material of Eckhardt to be a knitted material as taught by Cross because Cross teaches that this configuration is known in the art and may be provided in configurations which provide durability and wear resistance for the outer sole of the footwear (para. 0115).
To claim 2, the modified invention of Eckhardt (i.e., Eckhardt in view of Cross, as detailed above) further teaches an article of footwear wherein the insert has a profile with at least one protrusion (C of Eckhardt) extending away from a bottom surface of the insert and wherein the at least one protrusion increases traction of the outer sole (see especially Figures 1 and 5-6 and lines 32-67 of Eckhardt).
To claim 3, the modified invention of Eckhardt (i.e., Eckhardt in view of Cross, as detailed above) further teaches an article of footwear wherein the insert and the at least one protrusion are integrally formed (see especially Figure 5 and lines 40-42 of Eckhardt). It is further respectfully noted that it has been held that forming in one piece an article which has formerly been formed in two pieces involves only routine skill in the art (see MPEP 2144.04).
To claim 4, the modified invention of Eckhardt (i.e., Eckhardt in view of Cross, as detailed above) further teaches an article of footwear wherein the knitted material is reinforced with a polymer material (161 of Cross) (paras. 0068 and 0115-0125 of Cross).
To claim 5, the modified invention of Eckhardt (i.e., Eckhardt in view of Cross, as detailed above) further teaches an article of footwear wherein the polymer material is fused with a yarn of the knitted material (para. 0120 of Cross).
To claim 6, the modified invention of Eckhardt (i.e., Eckhardt in view of Cross, as detailed above) further teaches an article of footwear wherein the polymer material comprises a polymer layer applied to at least one surface of the knitted material (paras. 0115-0125 of Cross).
To claim 7, the modified invention of Eckhardt (i.e., Eckhardt in view of Cross, as detailed above) further teaches an article of footwear wherein the polymer layer is applied to a first side and a second side of the knitted material (paras. 0115-0125 of Cross).
To claim 8, the modified invention of Eckhardt (i.e., Eckhardt in view of Cross, as detailed above) further teaches an article of footwear wherein the polymer material is a polyurethane based material (paras. 0054, 0057, and 0115-0125 of Cross). It is further respectfully noted 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).
To claim 9, the modified invention of Eckhardt (i.e., Eckhardt in view of Cross, as detailed above) further teaches an article of footwear wherein the polymer material is thermoplastic polyurethane (paras. 0054, 0057, and 0115-0125 of Cross). It is further respectfully noted 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).
To claim 10, the modified invention of Eckhardt (i.e., Eckhardt in view of Cross, as detailed above) further teaches an article of footwear wherein the knitted material is pressed into a three-dimensional shape in a machine for compression molding (para. 0091 of Cross).
To claim 11, the modified invention of Eckhardt (i.e., Eckhardt in view of Cross, as detailed above) further teaches an article of footwear wherein the knitted material comprises a thermoplastic yarn (para. 0057 of Cross).
To claim 12, the modified invention of Eckhardt (i.e., Eckhardt in view of Cross, as detailed above) further teaches an article of footwear wherein the knitted material further comprises a melt yarn capable of fusing to the insert (paras. 0057 and 0120 of Cross).
To claim 13, the modified invention of Eckhardt (i.e., Eckhardt in view of Cross, as detailed above) further teaches an article of footwear wherein the knitted material comprises a rubberized yarn (paras. 0057 and 0120-0124 of Cross).
To claim 14, the modified invention of Eckhardt (i.e., Eckhardt in view of Cross, as detailed above) further teaches an article of footwear wherein the rubberized yarn is a full-rubber yarn, a rubber-coated yarn, or a non-rubber yarn having qualities similar to rubber (paras. 0057 and 0120-0124 of Cross).
To claim 15, the modified invention of Eckhardt (i.e., Eckhardt in view of Cross, as detailed above) further teaches an article of footwear wherein the knitted material comprises a monofilament configured to reinforce the outer sole and reduce stretchability of the outer sole (paras. 0057 and 0120-0124 of Cross).
To claim 16, the modified invention of Eckhardt (i.e., Eckhardt in view of Cross, as detailed above) further teaches an article of footwear wherein the knitted material is weft-knitted or warp-knitted (para. 0083 of Cross).
To claim 19, the modified invention of Eckhardt (i.e., Eckhardt in view of Cross, as detailed above) further teaches an article of footwear wherein the insert is positioned between layers of the knitted material (see especially Figure 6 of Eckhardt; see especially Figures 22-27 of Cross).
To claim 20, the modified invention of Eckhardt (i.e., Eckhardt in view of Cross, as detailed above) further teaches an article of footwear wherein the knitted material comprises a weft-knitted pocket or a warp-knitted pocket into which a midsole is inserted (see especially Figure 6 of Eckhardt; see especially Figures 22-27 of Cross).
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Eckhardt in view of Cross (as applied to claim 1, above) and in further view of USPN 5,896,758 Rock et al.
To claims 17-18, the modified invention of Eckhardt (i.e., Eckhardt in view of Cross, as detailed above) teaches an article of footwear as recited in claim 1, above.
The modified invention of Eckhardt does not expressly teach an article of footwear wherein the knitted material is a spacer weft-knitted fabric or a spacer warp-knitted fabric and wherein layers of the spacer weft-knitted fabric or the spacer warp-knitted fabric comprise different yarns.
However, Rock teaches a knitted material wherein the knitted material is a spacer weft-knitted fabric or a spacer warp-knitted fabric and wherein layers of the spacer weft-knitted fabric or the spacer warp-knitted fabric comprise different yarns (Abstract; col. 1, lines 64-67).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the modified invention of Eckhardt such that the knitted material is a spacer weft-knitted fabric or a spacer warp-knitted fabric and wherein layers of the spacer weft-knitted fabric or a spacer warp-knitted fabric comprise different yarns as taught by Rock because Rock teaches that this configuration is known in the art and beneficial for providing cushioning (col. 1, lines 32-34).
ALTERNATE REJECTION: Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Eckhardt in view of USPN 7,353,626 Otis et al.
To claim 1, Eckhardt discloses an article of footwear (see Figures 1-7, reproduced above for convenience; lines 32-67) comprising:
a material (A) that extends below a foot of a wearer when the article of footwear is worn (see Figures 1-3 and 6-7; lines 32-67);
an insert (C,C2) that is connected by at least one of sewing, gluing, or welding to the material (see especially Figures 1 and 5-7; lines 56-67; sewing);
wherein the material comprises at least one opening (A’) (see especially Figures 1-2 and 6-7; lines 32-55);
wherein the insert is formed separately from the material and positioned so that at least a portion of the insert extends through the at least one opening without overlapping an outer surface of the material (see Figures 1-3 and 5-7; lines 32-67); and
wherein at least the portion of the insert that extends through the at least one opening forms at least a part of an outer sole of the article of footwear that contacts the ground when the article of footwear is worn (see especially Figures 1 and 6; lines 32-55).
Eckhardt is silent as to the composition of material (A), which forms at least a part of an outer sole of the article of footwear.
However, Otis teaches an article of footwear (10) (see Figures 1-6; col. 2, line 20 – col. 3, line 24) comprising an outer sole (38) wherein a material of the outer sole is a knitted material (see especially Figure 1; col. 2, lines 47-54).
Eckhardt and Otis teach analogous inventions in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the material of Eckhardt to be a knitted material as taught by Otis because Otis teaches that this configuration is known in the art and beneficial for providing slip-resistance (col. 1, lines 18-20).
This ALTERNATE REJECTION over Eckhardt in view of Otis has been limited to independent claim 1 in the interest of brevity. It is respectfully noted however that this ALTERNATE REJECTION may be relied upon to reject additional claim(s) in future office action(s).
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.
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/F Griffin Hall/ Primary Examiner, Art Unit 3732
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