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 .
Status of the Claims
As directed by the amendment received on February 2, 2026, claims 1 and 11 have been amended. Accordingly, claims 1-20 are currently pending in this application.
Response to Amendment
The amendments filed with the written response received on February 2, 2026, have been considered and an action on the merits follows. Any objections and rejections previously put forth in the Office Action dated October 31, 2025, are hereby withdrawn unless specifically noted below.
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 1-10 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 first outsole portion having a substantially U-shape extending continuously between a first medial leg […] and a first lateral leg” at lines 7-9. Due to the use of the word “between”, it is unclear if the first outsole portion is meant to include the first medial leg and the first lateral leg (i.e., forming part of the substantially U-shape) or if the first outsole portion is intended to be a separate structure intended to extend between the first medial leg and first lateral leg. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. Based on Applicant’s disclosure, it is suggested that the limitation instead read “a first outsole portion having a substantially U-shape extending continuously and including a first medial leg […] and a first lateral leg”. 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 2-10 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 1-8, 10-18, and 20 (claims 1-8 and 10, as best can be understood) are rejected under 35 U.S.C. 103 as being unpatentable over USPN 9,609,913 to Bates et al. (hereinafter, “Bates”).
Regarding claim 1, Bates teaches a sole structure for an article of footwear (See Bates, Figs. 44-46; sole (100) of footwear (10)), the sole structure comprising: a cushion including a series of lobes arranged from a forefoot region to a heel region along a medial side and a lateral side of the sole structure (See Bates, Figs. 45-46; fluid-filled pods (720, 730) arranged from forefoot to heel region along medial and lateral sides; Examiner notes that the term "region" is very broad and merely means "any large, indefinite, and continuous part of a surface or space" (Defn. No. 1 of "Collins English Dictionary – Complete and Unabridged, 12th Edition 2014" entry via TheFreeDictionary.com)); and an outsole having a first side attached to the cushion, a second side disposed on an opposite side of the outsole than the first side, the second side defining a ground-contacting surface of the sole structure (See Bates, Figs. 45-46; lower sole portion (130) having a first side attached to pods (720, 730); lower sole portion includes pod covers (131) on an opposite side of the lower sole portion defining a ground-contacting surface), a first outsole portion having a substantially U-shape extending between a first medial leg extending along the medial side of the sole structure from the heel region to at least a mid-foot region of the sole structure and a first lateral leg extending along the lateral side of the sole structure from the heel region to at least the mid-foot region of the sole structure (See annotated Fig. 46 of Bates below; first outsole portion having substantially U-shape and respective medial and lateral legs extending along respective sides of sole structure from heel region to mid-foot region; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)), and a second outsole portion having a substantially U-shape and including a second medial leg extending along the medial side of the sole structure and a second lateral leg extending along the lateral side of the sole structure (See annotated Fig. 46 of Bates below; second outsole portion having substantially U-shape and respective medial and lateral legs extending along respective sides of sole structure), the first medial leg, the first lateral leg, the second medial leg, and the second lateral leg each extending toward an anterior end of the sole structure (See annotated Fig. 46 of Bates below; medial and lateral legs of first and second portions all extend toward an anterior end of the sole).
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Annotated Fig. 46 of Bates
That said, although Bates, in other embodiments, discusses that lower sole portion (130) having pod covers (131) can further include passageway cover portions (132) connecting adjacent pod covers (See Bates, Col. 8, lines 13-19 and Col. 19, lines 7-21), Bates is silent to explicitly showing these passage cover portions (132) in the embodiment of Fig. 46 discussed above. Therefore, Bates is silent to the first outsole portion extending continuously between the claimed structures.
However, it would have at least been obvious for one of ordinary skill in the art at the time of the effective filing date of the invention to include the passageway cover portions from the other embodiments of Bates to connect adjacent pod covers in the embodiment of Fig. 46 of Bates thereby forming a continuously extending outsole portion for a variety of reasons including for example, but not limited to, extending outsole protection of the lower sole portion over the passageways to protect the bladder from damage when the sole structure contacts the ground (See Bates, Col. 8, lines 13-19 and Col. 19, lines 7-21).
Regarding claim 2, the modified sole structure of Bates (i.e., Bates as discussed with respect to claim 1 above) further teaches wherein the second outsole portion includes an arcuate segment extending between and joining the second medial leg and the second lateral leg (See annotated Fig. 46 of Bates above; base of substantially U-shaped second outsole portion, i.e., an arcuate segment, extends between and joins medial and lateral legs of second outsole portion; Examiner notes that the term "segment" is very broad and merely means "one of the parts into which something is divided; a division, portion, or section". (Defn. No. 1 of "Random House Kernerman Webster's College Dictionary" entry via TheFreeDictionary.com)).
Regarding claim 3, the modified sole structure of Bates (i.e., Bates as discussed with respect to claims 1-2 above) further teaches wherein the second outsole portion further includes an interior leg extending from the arcuate segment in a direction away from the anterior end (See annotated Fig. 46 of Bates above; second outsole portion includes interior leg extending from arcuate segment in a direction away from anterior end of sole).
Regarding claim 4, the modified sole structure of Bates (i.e., Bates as discussed with respect to claims 1-3 above) further teaches wherein the interior leg extends between the first medial leg and the first lateral leg (See annotated Fig. 46 of Bates above; interior leg of second outsole portion extends between medial and lateral legs of first outsole portion).
Regarding claim 5, the modified sole structure of Bates (i.e., Bates as discussed with respect to claim 1 above) further teaches a third outsole portion spaced apart and separated from the first outsole portion and the second outsole portion (See annotated Fig. 46 of Bates above; third outsole portion is spaced apart and separated from first and second outsole portions at least by channels formed between pods).
Regarding claim 6, the modified sole structure of Bates (i.e., Bates as discussed with respect to claims 1 and 5 above) further teaches wherein the third outsole portion includes a third medial leg extending along the medial side of the sole structure and a third lateral leg extending along the lateral side of the sole structure, the third medial leg and the third lateral leg extending toward the anterior end of the sole structure (See annotated Fig. 46 of Bates above; third outsole portion is substantially U-shaped and includes respective medial and lateral legs, i.e., the arms of the U-shape, extending along respective sides of the sole and in the direction toward the anterior end of sole).
Regarding claim 7, the modified sole structure of Bates (i.e., Bates as discussed with respect to claim 1 and 5-6 above) further teaches wherein the third outsole portion includes an arcuate portion extending between and connecting the third medial leg and the third lateral leg (See annotated Fig. 46 of Bates above; base of substantially U-shaped third outsole portion, i.e., an arcuate portion, extends between and connects medial and lateral legs of third outsole portion).
Regarding claim 8, the modified sole structure of Bates (i.e., Bates as discussed with respect to claim 1 and 5-7 above) further teaches wherein the third outsole portion includes an interior leg extending from the arcuate portion in a direction away from the anterior end (See annotated Fig. 46 of Bates above; third outsole portion includes interior leg extending from arcuate portion in a direction away from anterior end of sole).
Regarding claim 10, the modified sole structure of Bates (i.e., Bates as discussed with respect to claim 1 above) further teaches wherein the cushion comprises at least one of a fluid-filled chamber and a cushion material including one or more polymers (See Bates, Figs. 44-46; pods (720, 730) are fluid-filled chambers; See Col. 18, lines 35-45).
Regarding claim 11, Bates teaches a sole structure for an article of footwear (See Bates, Figs. 44-46; sole (100) of footwear (10)), the sole structure comprising: a cushion including a series of lobes arranged from a forefoot region to a heel region along a medial side and a lateral side of the sole structure (See Bates, Figs. 45-46; fluid-filled pods (720, 730) arranged from forefoot to heel region along medial and lateral sides; Examiner notes that the term "region" is very broad and merely means "any large, indefinite, and continuous part of a surface or space" (Defn. No. 1 of "Collins English Dictionary – Complete and Unabridged, 12th Edition 2014" entry via TheFreeDictionary.com)); and an outsole having a first side attached to the cushion, a second side disposed on an opposite side of the outsole than the first side, the second side defining a ground-contacting surface of the sole structure (See Bates, Figs. 45-46; lower sole portion (130) having a first side attached to pods (720, 730); lower sole portion includes pod covers (131) on an opposite side of the lower sole portion defining a ground-contacting surface), a first outsole portion having a first medial leg extending along the medial side of the sole structure from the heel region to at least a mid-foot region of the sole structure and a first lateral leg extending along the lateral side of the sole structure from the heel region to at least a mid-foot region of the sole structure (See annotated Fig. 46 of Bates above; first outsole portion having respective medial and lateral legs extending along respective sides of sole structure from heel region to mid-foot region; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)), and a second outsole portion having a second medial leg extending along the medial side of the sole structure and a second lateral leg extending along the lateral side of the sole structure (See annotated Fig. 46 of Bates below; second outsole portion having respective medial and lateral legs extending along respective sides of sole structure), the first medial leg and the first lateral leg being connected by a first transverse segment extending across the sole structure and forming a first curved configuration that opens toward an anterior end of the sole structure (See annotated Fig. 46 of Bates above; base segment of first outsole portion, i.e., a first transverse segment, extends transversely across the sole structure and connects medial and lateral legs of first outsole portion to form a first curved configuration, i.e., a U-shape that opens toward the anterior end of the sole; Examiner notes that the term "segment" is very broad and merely means "one of the parts into which something is divided; a division, portion, or section". (Defn. No. 1 of "Random House Kernerman Webster's College Dictionary" entry via TheFreeDictionary.com)) and the second medial leg and the second lateral leg being connected by a second transverse segment extending across the sole structure, forming a second curved configuration that opens toward the anterior end of the sole structure (See annotated Fig. 46 of Bates above; base segment of second outsole portion, i.e., a second transverse segment, extends transversely across the sole structure and connects medial and lateral legs of second outsole portion to form a second curved configuration, i.e., a U-shape that opens toward the anterior end of the sole), and being aligned with the first curved configuration (See annotated Fig. 46 of Bates above; first and second curved configurations are aligned with one another at least along a longitudinal length of the sole structure; Examiner notes that the verb term "align" is very broad and has a definition of "[t]o arrange in a line or so as to be parallel" (Verb Defn. No. 1. of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)).
That said, although Bates, in other embodiments, discusses that lower sole portion (130) having pod covers (131) can further include passageway cover portions (132) connecting adjacent pod covers (See Bates, Col. 8, lines 13-19 and Col. 19, lines 7-21), Bates is silent to explicitly showing these passage cover portions (132) in the embodiment of Fig. 46 discussed above. Therefore, Bates is silent to the first medial leg and the first lateral leg of the first outsole portion each extending continuously along respective sides as claimed.
However, it would have at least been obvious for one of ordinary skill in the art at the time of the effective filing date of the invention to include the passageway cover portions from the other embodiments of Bates to connect adjacent pod covers in the embodiment of Fig. 46 of Bates thereby forming a continuously extending outsole portion for a variety of reasons including for example, but not limited to, extending outsole protection of the lower sole portion over the passageways to protect the bladder from damage when the sole structure contacts the ground (See Bates, Col. 8, lines 13-19 and Col. 19, lines 7-21).
Regarding claim 12, the modified sole structure of Bates (i.e., Bates as discussed with respect to claim 11 above) further teaches wherein the second outsole portion includes an interior leg extending from the second transverse segment in a direction away from the anterior end (See annotated Fig. 46 of Bates above; second outsole portion includes interior leg extending from second transverse segment in a direction away from anterior end of sole).
Regarding claim 13, the modified sole structure of Bates (i.e., Bates as discussed with respect to claim 11-12 above) further teaches wherein the interior leg extends between the first medial leg and the first lateral leg (See annotated Fig. 46 of Bates above; interior leg of second outsole portion extends between medial and lateral legs of first outsole portion).
Regarding claim 14, the modified sole structure of Bates (i.e., Bates as discussed with respect to claim 11 above) further teaches a third outsole portion spaced apart and separated from the first outsole portion and the second outsole portion (See annotated Fig. 46 of Bates above; third outsole portion is spaced apart and separated from first and second outsole portions at least by channels formed between pods).
Regarding claim 15, the modified sole structure of Bates (i.e., Bates as discussed with respect to claims 1 and 14 above) further teaches wherein the third outsole portion includes a third medial leg extending along the medial side of the sole structure and a third lateral leg extending along the lateral side of the sole structure, the third medial leg and the third lateral leg extending toward the anterior end of the sole structure (See annotated Fig. 46 of Bates above; third outsole portion includes respective medial and lateral legs extending along respective sides of the sole and in the direction toward the anterior end of sole).
Regarding claim 16, the modified sole structure of Bates (i.e., Bates as discussed with respect to claims 11 and 14-15 above) further teaches wherein the third outsole portion includes a third transverse segment extending across the sole structure and forms a third curved configuration that opens toward the anterior end of the sole structure (See annotated Fig. 46 of Bates above; base segment of third outsole portion, i.e., a third transverse segment, extends transversely across the sole structure and connects medial and lateral legs of third outsole portion to form a third curved configuration, i.e., a U-shape that opens toward the anterior end of the sole).
Regarding claim 17, the modified sole structure of Bates (i.e., Bates as discussed with respect to claims 11 and 14-16 above) further teaches wherein the third curved configuration is aligned with the first curved configuration and the second curved configuration (See annotated Fig. 46 of Bates above; formed third curved configuration is aligned with first and second curved configurations at least along a longitudinal length of the sole structure).
Regarding claim 18, the modified sole structure of Bates (i.e., Bates as discussed with respect to claims 11 and 14-16 above) further teaches wherein the third outsole portion includes an interior leg extending from the third transverse segment in a direction away from the anterior end (See annotated Fig. 46 of Bates above; third outsole portion includes interior leg extending from third transverse segment in a direction away from anterior end of sole).
Regarding claim 20, the modified sole structure of Bates (i.e., Bates as discussed with respect to claim 11 above) further teaches wherein the cushion comprises at least one of a fluid-filled chamber and a cushion material including one or more polymers (See Bates, Figs. 44-46; pods (720, 730) are fluid-filled chambers; See Col. 18, lines 35-45).
Claims 9 and 19 (claim 9, as best can be understood) are rejected under 35 U.S.C. 103 as being unpatentable over Bates (as applied to claim 1 above with respect to claim 9, and as applied to claim 11 with respect to claim 19), and further in view of USPN 5,815,949 to Sessa (hereinafter, “Sessa”).
Regarding claim 9, the modified sole structure of Bates (i.e., Bates as discussed with respect to claim 1 above) further teaches wherein the first outsole portion comprises a first outsole material and the second outsole portion comprises a second outsole material (lower sole portion (130) which includes the first and second outsole portions can be made from a variety of wear-resistant materials; See Bates, Col. 8, lines 38-45).
That said, although Bates contemplates a sole being constructed out of one or more materials (See Bates, Col. 8, line 43-44), the modified sole structure of Bates is silent to the first outsole material and the second outsole material differ from each other in at least one of appearance, physical properties, and composition.
However, Sessa, in a related footwear sole structure art, is directed to a footwear sole having a plurality of pumping channels internal to the sole structure (See Sessa, Figs. 1-2; abstract). More specifically, Sessa teaches the first outsole material and the second outsole material differ from each other in at least one of appearance, physical properties, and composition (See Sessa, Fig. 2; outer portion (36) of outsole at heel region is formed from a first opaque material and surrounds an interior window portion (18) of the outsole which is formed from a transparent or translucent wear-resistant material, i.e., a different appearance; Col. 3, lines 23-25).
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 interior leg of the second outsole portion of the modified sole structure of Bates from the translucent wear-resistant material as disclosed by Sessa for a variety of reasons including for example, but not limited to, the aesthetic purposes of providing a window for partially revealing the interior structure of the pods within the sole structure of Bates through the outsole while retaining the wear-resistance of the overall ground-contacting surface (See Sessa, Col. 1, lines 18-21; Col. 2, lines 44-45).
Regarding claim 19, the modified sole structure of Bates (i.e., Bates as discussed with respect to claim 11 above) further teaches wherein the first outsole portion comprises a first outsole material and the second outsole portion comprises a second outsole material (lower sole portion (130) which includes the first and second outsole portions can be made from a variety of wear-resistant materials; See Bates, Col. 8, lines 38-45).
That said, although Bates contemplates a sole being constructed out of one or more materials (See Bates, Col. 8, line 43-44), the modified sole structure of Bates is silent to the first outsole material and the second outsole material differ from each other in at least one of appearance, physical properties, and composition.
However, Sessa, in a related footwear sole structure art, is directed to a footwear sole having a plurality of pumping channels internal to the sole structure (See Sessa, Figs. 1-2; abstract). More specifically, Sessa teaches the first outsole material and the second outsole material differ from each other in at least one of appearance, physical properties, and composition (See Sessa, Fig. 2; outer portion (36) of outsole at heel region is formed from a first opaque material and surrounds an interior window portion (18) of the outsole which is formed from a transparent or translucent wear-resistant material, i.e., a different appearance; Col. 3, lines 23-25).
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 interior leg of the second outsole portion of the modified sole structure of Bates from the translucent wear-resistant material as disclosed by Sessa for a variety of reasons including for example, but not limited to, the aesthetic purposes of providing a window for partially revealing the interior structure of the pods within the sole structure of Bates through the outsole while retaining the wear-resistance of the overall ground-contacting surface (See Sessa, Col. 1, lines 18-21; Col. 2, lines 44-45).
Response to Arguments
Applicant’s arguments, filed February 2, 2026, with respect to the rejection of the claims under 35 USC 102 and 103 have been fully considered but are moot in view of the new grounds of rejection, as Applicant’s arguments appear to be drawn only to the newly amended limitations and previously presented rejections.
Examiner notes that Bates and Sessa are relied upon in a new grounds of rejection in response to Applicant’s amendment. As discussed above, the lower sole portion (130) of Bates is modified to include the passageway cover portions (132) discussed in other embodiments to explicitly connect adjacent pod covers (131) in the embodiment of Fig. 46 of Bates thereby forming an outsole portion that extends continuously as claimed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R MARCHEWKA whose telephone number is (571) 272-4038. The examiner can normally be reached M-F: 9:00AM-5:00PM EST.
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/MATTHEW R MARCHEWKA/Examiner, Art Unit 3732