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 (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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
The specification fails to provide proper antecedent basis for the limitation “elastic element” in the claims. For purposes of examination “elastic element” will be construed to be - - the bladder -- .
The specification fails to provide proper antecedent basis for the limitation “columnar” in the claims. For purposes of examination “columnar” will be construed to be - - resembling a column - -.
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(s) 1-5, 7-14 and 16-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Connell et al. (Pub. No. US 2018/0213,886).
With respect to claims 1 & 9-10, Connell et al. discloses a sole structure (see figures 54-57B) for an article of footwear (10k, see figures 54-57B), the sole structure (midsole 36k; outsole 38k) comprising:
an upper cushion extending from a first end to a second end (146k, the midsole 36K includes a continuously formed upper portion 146K, see figures 55 and 57B; the upper segment is shown as extending from the anterior end 44 of the article of footwear 10 to the posterior end 46, see figure 57B, for example);
a lower cushion (with reference to FIGS. 57A-B, the midsole 36k may include a segmented lower portion 148k), comprising:
a first cushion (segmented lower portion 152k, see figure 57B) attached to the upper cushion (146k) adjacent to the first end (forefoot end 146k, see figure 57B) and including a tray (third plate 270 that extends from the forefoot region of the article of footwear towards the posterior end, see figure 57B) extending towards the heel region of the sole structure (the sole structure 14k may include a first plate 266, a second plate 268, and a third plate 270 that extend from the forefoot region 16 of the article of footwear 10k towards the posterior end 46; thereby providing increased stability to the cushioning arrangement 40k and distributing loads throughout the sole structure 14k), and
a second cushion (segmented lower portion 148k) attached to the upper cushion (146k) and spaced from the first cushion (152k) by a gap (void created between the cushions and the plate 270, see figure 57B), the tray (third plate 270) of the first cushion opposing the second cushion (148k, see figure 57B) across the gap; and
at least one elastic element (fluid-filled chambers 40K, see figures 57B) including an anterior end and a posterior end supported between the tray (270) of the first cushion (152k) and the upper cushion (146k, see figures 57B);
a terminal end of the tray (270) aligning with or extending beyond the posterior end of the at least one elastic element (40k, third plate 270 extend from the forefoot region 16 of the article of footwear 10k towards the posterior end 46, see figure 57B); and
wherein the sole structure further comprising an outsole (38j-k) disposed on an opposite side of the lower cushion from the at least one elastic element).
With respect to claim 2, Connell et al. discloses the sole structure further comprising a plate (268) disposed between the at least one elastic element (40k) and the upper cushion (146k, see figure 57B, for example).
With respect to claim 3, Connell et al. discloses wherein a first side of the at least one elastic element (40k) is attached to the tray (270, see figure 57B) and an opposite second side of the at least one elastic element (40k) is attached to the plate (268, see figure 57B, for example);
With respect to claim 4, Connell et al. discloses wherein the lower cushion (148K) includes a support portion attached to the upper cushion (146k), the tray (270) being cantilevered from the support portion (see figure 57B).
With respect to claim 5, Connell et al. discloses wherein the at least one elastic element (40k) includes a first elastic element (see figure 57A) disposed at a medial side of the sole structure and a second elastic element (see figure 57A) disposed at a lateral side of the sole structure.
With respect to claim 7, as best understood by the examine, Connell et al. discloses wherein at least one elastic element (40k) resembles a column (i.e. a supporting pillar, see figure 57A).
With respect to claim 8, Connell et al. discloses wherein a gap is disposed between the at least one elastic element (40K) and the first cushion (146k, see figures 57A & 57B), the gap being located closer to an anterior end (44, see figure 57B) of the sole structure than the at least one elastic element (40k).
With respect to claim 11, Connell et al. discloses a sole structure (see figures 54-57B) for an article of footwear (see figure 55), the sole structure comprising:
an upper cushion (upper segment of midsole 36 includes a continuously formed upper portion 146k, see figure 57B, for example) extending from first end to a second end;
a lower cushion (segmented lower portion 148k) including a first cushion (152k, see figure 57B) attached to the upper cushion (146k) adjacent to the first end and including a tray (third plate 270, see figure 57B) extending towards a heel region of the sole structure (14k);
a plate (268) attached to the upper cushion (146k) and disposed between the upper cushion (146k) and the first cushion(152k); and at least one elastic element (40k) including an anterior end and a posterior end supported between the tray (270) of the first cushion (152k) and the plate (268), a terminal end of the tray (270) aligning with or extending beyond the posterior end of the at least one elastic element (40k, see figure 57B).
With respect to claim 12, Connell et al. discloses wherein a first side of the at least one elastic element (40K) is attached to the tray (270) and an opposite second side of the at least one elastic element (40k) is attached to the plate (268, see figure 57B).
With respect to claim 13, Connell et al. discloses wherein the lower cushion (148k, see figure 55) includes a support portion (plate 272) attached to the upper cushion (146k), the tray (270) being cantilevered from the support portion (272).
With respect to claim 14, Connell et al. discloses wherein the at least one elastic element (40K) includes a first elastic element disposed at a medial side of the sole structure and a second elastic element disposed at a lateral side of the sole structure (see figure 55).
With respect to claim 16, as best understood by the examine, Connell et al. discloses wherein at least one elastic element (40k) resembles a column (i.e. a supporting pillar, see figure 57A).
With respect to claim 17, Connell et al. discloses a gap disposed between the at least one elastic element (40K) and the first cushion (146K), the gap being located closer to an anterior end of the sole structure than the at least one elastic element (see figures 55 & 57B).
With respect to claim 18, Connell et al. discloses an outsole (38K) disposed on an opposite side of the lower cushion (148k) from the at least one elastic element (40k).
With respect to claim 19, Connell et al. discloses wherein the tray of the lower cushion includes a foam material (see paragraph [0123]).
With respect to claim 20, Connell et al. discloses wherein the lower cushion (148k, see figure 55) includes a second cushion (154k2) disposed in a heel region of the sole structure and spaced apart from the first cushion (152K1) by a gap in a direction extending along a longitudinal axis of the sole structure, the tray (270) opposing the second cushion (154k2) across the gap.
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.
Claim(s) 6 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Connell et al.
Connell et al. discloses all the limitations of the claims except for a socket formed between the lower surface of the upper cushion and upper surface of the lower cushion. However, Connell et al. discloses each of the plates 236, 238, 240 may include one or more sockets 257 configured to receive the cushioning arrangement 40j therein. As shown in FIG. 51, the sockets 257 may be defined by a rib, protrusion, or recess formed on one or more surfaces of each of the respective plates 236, 238, 240 and configured to interface with the cushioning arrangement 40j. Accordingly, the sockets 257 receive respective ends of the cushioning arrangement 40j to secure a position of the cushioning arrangement 40j with respect to each plate 236, 238, 240. Connell et al. also discloses that while the tray/midsole 36a includes a substantially continuous surface 96, the continuous surface 96 may be interrupted at a medial recess 98 and at a lateral recess 100 (see figure 9). Therefore, it would have been obvious to one of ordinary skill in the art to provide a socket formed between the lower surface of the upper cushion and upper surface of the lower cushion, since Connell et al. discloses that providing sockets helps with better securing and holding the cushions with respect to the layers.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,250,988. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent. The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter. Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See MPEP § 804.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shown are sole structures with cushioning layers and bladders.
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 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
11/25/2025