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 .
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.
Claims 1, 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 9125453 (Keating) in view of US 2008/0229617 (Johnson).
Regarding claims 1-2, Keating discloses a shoe (see figures 1-10, especially figures 8-11. The shoe can inherently be used as a golf shoe) comprising:
a midsole (not shown: see col. 2, lines 10-12 and col. 4, lines 33-35);
outsoles (outsole 13 divided into a plurality of blocks) attached to the inward side and the outward side of the toe portion of the midsole (see figures 8 and 11 showing the outsole divided having an inward side and outward side; the inward side are adjacent to the gap 50 and the outward side is adjacent to the outward perimeter edge of the outsole), respectively, while being spaced apart from each other (spacing defined by gap 50),
wherein the outsoles include:
a through-hole formed through laterally (holes extending through tubes; e.g. tubes 14,49,53,54);
a member (i.e. tubes) having a predetermined thickness along an edge of the through- hole; and
a cleat (cleats/protrusions 32 on lower ground contacting side of the tubes; see col. 9, lines 22-24) protruding from an exposed surface exposed to an outside while the outsoles are attached to the inward side and the outward side of the toe portion of the midsole.
Keating lacks showing the midsole and therefore it is not clear if the midsole includes a toe portion divided into an inward side and an outward side and formed in a center thereof with a space (claim 1) and includes a heel portion divided into an inward side and an outward side and formed in a center thereof with a space (claim 2).
Johnson teaches an article of footwear having an articulated midsole (40) extending over the entire sole structure (see figure 3 showing the midsole in the both the toe and heel portions of the sole). The midsole (40) and outsole (50) of Johnson are both spaced by grooves 54 extending and aligned in both the midsole and outsole to enhance flexibility, see figures 1-12B. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the article of footwear as taught by Keating with the midsole including a toe portion and heel portion with a spacing corresponding and aligned with the central spacing in the toe and heel portion of the outsole of Keating in order to divide the sole structure into an inward side and an outward side and form the center thereof with a spacing in both the toe and heel portion, in view of the teaching of Johnson, to enhance providing flexibility to the sole.
All of the functional claim language (e.g. last paragraph of claim 1) and statements of intended use (e.g. anti-sway golf shoe) do not make an otherwise unpatentable claim patentable. It is believed to be well settled that "recitation with respect to manner in which claimed apparatus is intended to be employed does not differentiate claimed apparatus from prior art apparatus satisfying structural limitations of that claimed" Ex parte Masham 2 USPQ2nd 1647. Also see Ex parte Casey 152 USPQ 235. Furthermore, it is only necessary that the reference include structure capable of performing the recited function in order to meet the functional limitations of a claim. See In re Mott, 557 F.2d 266, 194 USPQ 305 (CCPA 1977). Since the prior art as taught by the combination above has all of the same structural elements, as noted above, it would clearly seem to be inherently capable of performing the functions as claimed.
Regarding claim 2 [2. The anti-sway golf shoe of claim 1, wherein the midsole has a heel portion divided into an inward side and an outward side to which the outsoles are attached, respectively, to form a separation space in a center of the heel portion, and the inner line of the outsoles are more pressed down by the support force of the foot sole while the anti-sway golf shoe is worn compared to the outer line, so that a more natural support force is generated on the outer line]. The separation space (see groove 54 in figure 7 of Johnson) of the midsole of Johnson also extends in the heel portion. The space as defined by Keating also extends in the heel portion of the shoe. Therefore the combination as taught above has a midsole separation space in a center of the toe portion and heel portion as claimed and will inherently perform the functional language as claimed inasmuch as it has all the structure as claimed.
Allowable Subject Matter
Claims 3-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 3 and 9, further define the midsole and the insertion groove to allow the outsoles to be inserted, so that the outsoles are easily attached and have stability after being attached is not taught or fairly suggested by the combination of prior art found; thus such as combination would only be arrived at using improper hindsight reasoning using information gleaned only from Applicant’s disclosure.
Claims 5 and 10, further define the through-hole is gradually vertically opened from an inner side to an outer side in order to feel more support force on the outward side of the foot sole than on the inward side during backswing or downswing while the outsoles are attached, so that a support force transmitted to the foot sole in an address state is felt on the foot sole outward is not taught or fairly suggested by the combination of prior art found; thus such as combination would only be arrived at using improper hindsight reasoning using information gleaned only from Applicant’s disclosure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art cited and not relied upon by the Examiner for the above rejections are considered to be pertinent in that the references cited are considered to be the nearest prior art to the subject matter defined in the claims as required by MPEP707.05.
Applicant is duly reminded that a complete response must satisfy the requirements of 37 C.F. R. 1.111, including:
-“The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.”
--“A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.”
-Moreover, “The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP 2163.06” MPEP 714.02. The “disclosure” includes the claims, the specification and the drawings.
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/Ted Kavanaugh/
Primary Patent Examiner
Art Unit 3732
Tel: (571) 272-4556