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 .
Election/Restrictions
Applicant’s election without traverse of Species I, fig.1, claims 1-11, 14, 16-18 in the reply filed on 02/05/2026 is acknowledged.
Claim Objections
Claim 18 is objected to because of the following informalities:
Claim 18, could read “A kit comprising a pair of footwear outsoles, said footwear outsole according to claim 1”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 4 is 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.
Regarding claim 4, the phrase " wherein at least one of the grooves extends from a medial side of the footwear outsole through to a lateral side of the footwear outsole" renders the claim indefinite because it is unclear what structure is being claimed? Since fig.1 shows the only the anatomical flex grooves extending through from the medial side to the lateral side of the Chassis 10; and the grooves 22, 24, 26 do not extending through from the medial side to the lateral side of the Chassis 10, and not the outsole. For the purpose of examination and as best understood the limitation is interpreted to “wherein at least one of the grooves extends partially from a medial side to lateral side of the classis.
Claim Rejections - 35 USC § 102
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 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) 1-3, 6, 9-11, 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hoeck, III et al. (2025/0366564—hereinafter, Hoeck).
Regarding claim 1, Hoeck discloses a footwear outsole (elements 104, 106, 234, fig.2) comprising: a chassis (104); a plurality of openings (228) formed within the chassis, the plurality of openings including at least a first opening and a second opening (fig.2); a plurality of inserts (106, 234) configured to be removably received within the plurality of openings (fig.2), the plurality of inserts including at least a first insert (234) and a second insert (106), wherein the first insert is configured to be received within the first opening (fig.2, par [0102]), and the second insert is configured to be received within the second opening (fig.2, par [0102]); wherein the first insert has a first coefficient of friction (fig.2, par [0102] the structure of element 234 including a first connector 226 is configured to provide a first coefficient or friction fit, par [0097) to provide a first surface property in a first outsole location, and the second insert has a second coefficient (fig.2, par [0102] the structure of element 106 including a plurality of connectors 226 is configured to provide a second coefficient or friction fit, par [0097) of friction to provide a second surface property in a second outsole location, wherein the second coefficient of friction is different than the first coefficient of friction (fig.2, the structure of element 234 is different than the structure of element 106); and wherein the first and second inserts each include a mechanical faster (structure of elements 228, 226, par [0102]) to removably secure the first and second inserts respectively in the first and second openings (fig.2, par [0102]).
Regarding claims 2-3, Hoeck discloses wherein the mechanical fastener on each of the first and second inserts includes a tongue (the structure of element 226), and wherein each of the first and second openings in the chassis includes a mating mechanical fastener (structure of element 228), wherein the tongue is configured to be slidably received within the mating mechanical fastener (fig.2, par [0102]); wherein the mating mechanical fastener on each of the first and second openings is a groove (structure of elements 228) configured to receive the tongue (structure of element 226).
Regarding claims 6, 9-11, 14, Hoeck discloses wherein the chassis extends from a forefoot region to a heel region (fig.2), and wherein the first opening (element 228 of 104 at the heel region) and first insert (element 226 of element 106 at the heel region) are located in the heel region of the chassis, and the second opening (element 228 of element 104 at the forefoot region) and second insert (element 228 of element 234) are located in the forefoot region of the chassis; wherein the first insert includes a slide or traction pad (fig.2 shows the structure of elements 106 or 104 or 234 is a friction pad), such as a microfiber material, rubber, split suede leather, nubuck leather, and/or a non-woven fiber board; wherein the chassis is made of thermoplastic polyurethane (TPU) (par [0078]); wherein the first insert has a coefficient of friction that enables a user wearing the footwear outsole to push along the first outsole location (fig.2, the structure of element 234 is different than the structure of element 106), and wherein the second insert has a coefficient of friction that enables a user wearing the footwear outsole to slide along the second outsole location (fig.2, par [0102] the structure of element 106 including a plurality of connectors 226 is configured to provide a second coefficient or friction fit, par [0097); wherein the chassis extends from a forefoot region to a heel region, and wherein the first opening and first insert are located in the heel region of the chassis (element 228 of 104 at the heel region), and the second opening and second insert are located in the forefoot region of the chassis (element 228 of element 104 at the forefoot region).
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.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Hoeck, III et al. (2025/0366564—hereinafter, Hoeck).
Regarding claim 18, Hoeck disclose said footwear outsole according to claim 1 (see the rejection of claim 1 above); par [0072] the footwear can be in pair. But Hoeck does not disclose a kit comprising a pair of footwear outsoles, said the sole recited in claim 1, including a right footwear and a left footwear, in combination with at least four inserts configured to be removably received within the plurality of openings, the at least four inserts having a plurality of coefficients of frictions such that a user can select the first and second inserts based upon the desired surface properties, wherein the coefficient of friction for the inserts in the right footwear are different than the coefficient of friction for the inserts in the left footwear. However, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to recognize to form as the claimed invention, such modification would be considered a mere duplication of known part involves routine skill in the art.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Hoeck, III et al. (2025/0366564—hereinafter, Hoeck) in view of Santo et al. (10226102—hereinafter, Santo).
Regarding claim 4, Hoeck does not disclose the footwear outsole of claim 3, wherein at least one of the grooves extends partially from a medial side to a lateral side of the classis. However, Santo teaches another similar footwear article fig.1A-1C, shows a first outsole 100 attached to the heel region of the midsole and a second outsole 200A attached to the forepart region of the midsole. Fig.2A-2B shows the midsole toe edge 610A having grooves 601, 602 extending from a lateral side to medial side and are configured to receive the tongues of the second outsole 200A for attaching and removing the outsole from the midsole. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to provide the grooves extends from a medial side through/partial the lateral side of the classis for Hoeck as taught by Santo in order to provide better securing between the outsole and the midsole.
Allowable Subject Matter
Claims 5, 7-8, 16-17 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY K TRIEU whose telephone number is (571)270-3495. The examiner can normally be reached 8-4.
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/Timothy K Trieu/ Primary Examiner, Art Unit 3732