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 .
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 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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 22 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Green et al. (Pub. No. US 2006/0130364, herein after Green).
With respect to claim 22, Green discloses an article of footwear (see figures 1-14C) comprising:
An upper (110, see figure 1);
a midsole (foot supporting member, see figures 3A-6) coupled with the upper, the midsole comprising:
a first compressible material (polyurethane foam or ethylvinylacetate foam frame portion 210) , and
a second compressible material (insert portion 220, 220a-c, see paragraph [0086]) that differs from the first compressible material (insert portion 620a may be formed of a material having different degrees of compliance), wherein a bottom surface of the second compressible material is co-planar (lower surface 222 of the insert 220 is flush with lower surface 212 of the frame 210, see paragraph [0063]) with the first compressible material along the bottom surface of the midsole; and
an outsole (outsole 260 is illustrated in Fig. 9) including a ground engaging surface with traction elements extending from the ground engaging surface, wherein the outsole continuously extends over the first compressible material and the second compressible material (see figures 1 and 14A-C) of the midsole;
Wherein the midsole (210; 220, etc.) is disposed between the upper (110) and the outsole (260, see figure 2).
Claim(s) 1, 6, 8 and 22-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tang (Pub. No. US 2012/0324758).
Tang discloses a sole structure for an article of footwear (see figures 1-2) comprising:
a midsole (Layer B and layer C, see figure 1 which is an isometric view cushiony sole layer) comprising:
a first compressible material (elastomeric cushion layer B is an isometric view cushiony sole layer), and
a second compressible material (firm elastic material with filaments layer C) that differs from the first compressible material, wherein a bottom surface of the second compressible material is co-planar with the first compressible material along the bottom surface of the midsole (layers B and C are identical in thickness; Mid-section of layer B in the vertical and horizontal inside outer comprises full fit into cutout channel of layer C); and
an outsole (layer D) coupled directly and non-removably secured with the bottom surface of the midsole (layer D could be attached to the midsole by nailing and/or adhesive), wherein the outsole includes a ground engaging surface with traction elements extending from the ground engaging surface (layer D4 has a surface that is resistant to outside impacts), and the outsole (layer D) continuously extends over the first compressible material (layer B) and the second compressible material (layer C, see figures 1 & 2).
With respect to claim 6, Tang discloses wherein the outsole continuously extends over the entire length of the second compressible material and also an entire length of the midsole (see figures 1-2, which illustrates a full length outsole).
With respect to claim 8, Tang discloses wherein exterior sidewall surfaces of the midsole and outsole combine to form an arcuate profile along toe, heel, medial and lateral sides of the sole structure (see figures 1-2).
With respect to claim 22, Tang discloses an article of footwear comprising:
an upper (explicit to footwears in order to hold and secure the footwear to the foot of the wearer);
a midsole (elastomeric cushion layer b, see figure 1) coupled with the upper (explicit to footwears), the midsole comprising a first compressible material (elastomeric cushion layer), and a second compressible material (firm elastic material with filaments layer C) that differs from the first compressible material, wherein a bottom surface of the second compressible material is co-planar with the first compressible material along the bottom surface of the midsole (layers B and C are identical in thickness; Mid-section of layer B in the vertical and horizontal inside outer comprises full fit into cutout channel of layer C); and
an outsole (layer D) including a ground engaging surface with traction elements extending from the ground engaging surface (layer D4 has a surface that is resistant to outside impacts), wherein the outsole continuously extends over the first compressible material and the second compressible material of the midsole (see figures 1-2); wherein the midsole is disposed between the upper and the outsole (see figures 1-2).
With respect to claim 23, Tang discloses the article of footwear of claim 22, wherein the midsole is non-removable from the article of footwear (layer D could be attached to the midsole by nailing and/or adhesive).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 5 is rejected under 35 U.S.C. 103 as being unpatentable over Tang.
With respect to claim 5, it would have been obvious to one of ordinary skill in the art to modify the thickness of the insert of Tang to be one half to one third a thickness of a corresponding midsole section located directly above the insert, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459,105 USPQ 237 (CCPA 1955).
Claim(s) 2-4, 7, 9-17 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Tang in view of Hurd et al. (Pub. No. US 2014/0115925, herein after Hurd).
Tang as described above discloses all the limitations of the claims except for wherein: the midsole includes a groove located at a heel side location of the sole structure and extending in a direction from a top edge of the midsole to a portion of the bottom surface of the midsole, traversing both a midsole top portion and a midsole bottom portion; and the outsole includes a groove located at the heel side location of the sole structure and aligned with the corresponding midsole groove.
Hurd discloses wherein the midsole includes a groove (outsole/third spring plate 13 includes channels 35a through 35m. Similar channels can be formed in regions of insert/second spring plate 12 corresponding to the regions of outsole/third spring plate in which channels 35a through 35m are located, as well as in regions of midsole/first spring plate 11/21) located at a heel side location and extending in a direction from a top edge of the midsole to a midsole bottom, traversing both a midsole top portion and a midsole bottom portion, and the outsole includes a groove (outsole/third spring plate 13/23 includes channels 35a through 35m. Similar channels can be formed in regions of insert/second spring plate 12/22 corresponding to the regions of outsole/third spring plate in which channels 35a through 35m are located, as well as in regions of midsole/first spring plate 11) located at the heel side location of the outsole and aligned to the corresponding midsole groove. Therefore, it would have been obvious to one of ordinary skill in the art in view of Hurd to provide a groove in the midsole of Tang, that includes the groove to traverse both a midsole top portion and a midsole bottom portion, and to provide a groove in the outsole of Tang that includes a groove located at the heel side location of the outsole and aligned to the corresponding midsole groove, to allow the sole structure to flex better in response to normal foot motions.
With respect to claim 3, Tang as modified by Hurd discloses wherein the outsole includes an elongated groove located at a heel side location of the sole structure and extending in a direction from a top edge of the outsole to a portion of the bottom surface of the outsole, traversing both an outsole top portion and an outsole bottom portion.
With respect to claim 4, Tang as modified by Hurd disclose wherein the midsole includes an elongated groove located at a heel side location of the outsole and extending in a direction from a top edge of the midsole to a portion of the bottom surface of the midsole, traversing both a midsole top portion and a midsole bottom portion.
With respect to claim 7, Tang discloses wherein both the first and second compressible elastic material but does not explicitly disclose the material to comprise ethylene vinyl acetate. Hurd discloses that the compressible sole materials can be formed from any of various types of foam materials or combinations of foam materials. Examples of such materials can include foamed EVA (ethylene vinyl acetate). Therefore, it would have ben obvious to one of ordinary skill in the art to make the first and second compressible materials from EVA as taught by Hurd, since 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. In re Leshin, 125 USPQ 416.
With respect to claim 9, Tang disclose wherein the ground engaging surface of the outsole includes a lower surface portion and a peripheral sidewall portion, and the traction elements are disposed along the ground engaging surface at the lower surface portion (see figure 2). Tang does not teach the traction elements on the peripheral sidewall portion.
Hurd discloses a ground engaging surface of the outsole to include a lower surface portion and a peripheral sidewall portion, and the traction elements are disposed along the ground engaging surface at the lower surface portion and the peripheral sidewall portion (see figures 1-3B). Therefore, it would have been obvious to one of ordinary skill in the art to provide traction elements on the peripheral sidewall portion of Tang as taught by Hurd to provide enhance traction to the footwear of Tang.
With respect to claim 10, Tang/Hurd discloses a plurality of traction zones defined at areas of the ground engaging surface of the outsole, wherein a number of traction elements differs between two or more traction zones (see figure 2E of Hurd).
With respect to claim 11, Tang/Hurd discloses wherein the plurality of traction zones comprises a central traction zone located centrally along the lower surface portion of the ground engaging surface (see figure 2E of Hurd), a lateral traction zone located along a lateral side of the ground engaging surface, a medial traction zone located along a medial side of the ground engaging surface (see figure 2E and paragraph [0034] of Hurd), a forward traction zone located along a forefoot region of the ground engaging surface, and a rearward traction zone located along a hindfoot region of the ground engaging surface (see figure 2E of Hurd).
Tang does not appear to disclose each of the forward and rearward traction zones includes more traction elements than any of the other traction zones. However, Hurd discloses that each of the forward and rearward traction zones includes more traction elements than any of the other traction zones. It would have been obvious to one of ordinary skill in the art to make the forward and rearward traction zones of Tang to include more traction elements than any of the other traction zones as taught by Hurd to increase traction where it is most needed.
With respect to claim 12, Hurd discloses that lugs, treads or other surface features can be formed in outsole elements 32 to further increase traction. It would have been obvious to one of ordinary skill in the art in view of Hurd, to have the traction elements of the central traction zone of Tang to have a lengthwise dimension h1 extending from the ground engaging surface of the outsole that is less than a lengthwise dimension h2 of traction elements of all other traction zones, since such a modification would have involved a mere change in the size and shape of a component. A change in size and shape is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459,105 USPQ 237 (CCPA 1955) and In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
With respect to claim 13, Tang/Hurd discloses a method of forming a sole structure for an article of footwear (see figure 1-2), the method comprising:
obtaining a midsole (foot-supporting layer B, see figures 1-2 of Tang) including a midsole groove (as taught and modified by Hurd) located at a heel side location of the midsole and extending in a direction from a top edge of the midsole to a midsole bottom;
positioning an insert (layer C) within the midsole such that a bottom surface of the insert is co- planar with the bottom surface of the midsole (layers B and C are identical in thickness; Mid-section of layer B in the vertical and horizontal inside outer comprises full fit into cutout channel of layer C);
obtaining an outsole (layer D, see figure 1 of Tang) including a ground engaging surface with traction elements extending from the ground engaging surface (D4), and an outsole groove (as taught and modified by Hurd) located at a heel side location of the outsole; and
directly and non-removably securing the midsole with the outsole (layer D could be attached to the midsole by nailing and/or adhesive) such that the insert is disposed between the midsole and the outsole (see figures 1-2 of Tang), at least a portion of the outsole continuously extends over an entire length of the insert and also over at least a portion of the bottom surface of the midsole (see figures 1-2), and the outsole groove aligns with and extends over a portion of the midsole groove (as taught and modified by Hurd).
With respect to claim 14, it would have been obvious to one of ordinary skill in the art to modify the thickness of the insert of Tang/Hurd to be one half to one third a thickness of a corresponding midsole section located directly above the insert, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459,105 USPQ 237 (CCPA 1955).
With respect to claim 15, Tang/Hurd discloses wherein the outsole includes a concave interior surface, and the midsole is combined with the outsole by securing the midsole against the concave interior surface of the outsole (see figure 1 of Tang).
With respect to claim 16, Tang/Hurd discloses wherein, upon combining the midsole with the outsole, exterior sidewall surfaces of the midsole and outsole combine to form an arcuate profile along toe, heel, medial and lateral sides of the sole structure (see figures 1-2 of Tang).
With respect to claim 17, Tang discloses wherein the ground engaging surface of the outsole includes a lower surface portion and a peripheral sidewall portion, and the traction elements are disposed along the ground engaging surface at the lower surface portion (see figure 1). Tang does not teach the traction elements on the peripheral sidewall portion. Hurd discloses a ground engaging surface of the outsole to include a lower surface portion and a peripheral sidewall portion, and the traction elements are disposed along the ground engaging surface at the lower surface portion and the peripheral sidewall portion (see figures 1-3B). Therefore, it would have been obvious to one of ordinary skill in the art to provide traction elements on the peripheral sidewall portion of Tang as taught by Hurd to provide enhance traction to the footwear of Tang.
With respect to claim 21, Tang/Hurd discloses a method of forming an article of footwear, comprising:
Coupling an upper with the sole structure of claim 13 such that the midsole is disposed between the upper and the outsole (see figures 1-3 of Tang).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-17 and 21-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. US 10,383,394 (Dombrow). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the patent may be wholly derived from the claimed subject matter of application. Furthermore, since Patent ‘394 claims a more specific embodiment than the instant application, once applicant has received a patent for a species or a more specific embodiment, he is not entitled to a patent for a generic or broader invention, because the more specific “anticipates” the broader. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993).
Claims 1-17 and 21-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. US 11,234,484 (Dombrow). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the patent may be wholly derived from the claimed subject matter of application. Furthermore, since Patent ‘484 claims a more specific embodiment than the instant application, once applicant has received a patent for a species or a more specific embodiment, he is not entitled to a patent for a generic or broader invention, because the more specific “anticipates” the broader. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993).
Claims 1-17 and 21-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US 12,239,184 (Dombrow). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the patent may be wholly derived from the claimed subject matter of application. Furthermore, since Patent ‘184 claims a more specific embodiment than the instant application, once applicant has received a patent for a species or a more specific embodiment, he is not entitled to a patent for a generic or broader invention, because the more specific “anticipates” the broader. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-17 and 21-23 have been considered but are moot because the new ground of rejection does not rely on any reference as combined and as applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shown are sole structures analogous to applicant’s instant invention.
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 JILA M MOHANDESI whose telephone number is (571)272-4558. The examiner can normally be reached on M-Thurs. 7:00-5:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alissa J Tompkins can be reached on 571-272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JILA M MOHANDESI/Primary Examiner, Art Unit 3732
JMM
02/23/2026