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 Claims
Claims 1-12 filed on 3/18/2025 are currently pending in the application and are presented for examination on the merits.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/18/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. However, the Office will accept photographs in utility and design patent applications if photographs are the only practicable medium for illustrating the claimed invention. See 37 CFR 1.84(b). See also 37 CFR 1.81(c) and 37 CFR 1.83(c), and MPEP § 608.02.
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because figure 1 as currently submitted, appears to be a photograph. Additionally, the pixelated quality of the photograph and the lack of contrast between different areas makes it difficult to discern what is being depicted in the drawing. Applicant is reminded that drawings in utility patent applications must be black and white line drawings (not black and white photographs). See MPEP 1.84. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “upper having a lower edge received in said gap” and “a fastener extending horizontally through the midsole and into the lower edge of the upper and the internal frame” (claim 1) must be shown or the feature(s) canceled from the claim(s). Examiner notes that an arrow merely showing the direction of insertion of the fasteners is not a sufficient depiction of the particular depth of penetration of the fasteners that is claimed, and the upper is never depicted in the figures that have the arrow showing the direction of insertion of the fasteners, so the drawings do not sufficiently depict the fastener extending through the parts that are claimed. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: Shoe with footbed having an embedded internal frame.
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 10-11 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 10, the claim recites the limitation “a lightweight polymer”. It is unclear what polymer materials would be considered by Applicant to be “lightweight” as a particular degree of how lightweight a polymer must be in order to be considered “lightweight” has not been clearly defined.
The dependent claims inherit the deficiency by nature of dependency.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 4-8 rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Regarding claim 4, the claim recites the limitation “an upper surface in contact with the foot of the wearer”. This limitation positively claims human anatomy because it defines the upper surface using the wearer’s foot. Also, it appears that the claim as currently written would require the upper surface to always be in contact with the wearer’s foot. Examiner respectfully suggests amending to “an upper surface configured to be in contact with the foot of the wearer”.
The dependent claims inherit the deficiency by nature of dependency.
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.
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.
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.
Claim(s) 1-2, 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Agati (US 2018/0168283) in view of and Schenkel (US 6125555).
Regarding claim 1, Agati discloses: A shoe, comprising: a footbed (7) having a footbed height (see figure 1a showing the footbed height), and a footbed perimeter with a curvature and dimension that corresponds to a foot of a wearer (see figure 1b showing the footbed perimeter); a midsole (20) having a midsole height (see figure 1a showing the midsole height) and midsole perimeter with a curvature and dimension that correspond to that of the footbed perimeter (see figure 1b showing the midsole perimeter), wherein the midsole perimeter is larger than the footbed perimeter (see figure 1b showing the midsole perimeter is larger than the footbed perimeter) so that a lower portion of the footbed height is received in the midsole (see figure 1a showing that a lower portion of the footbed height is received in the midsole) and provides a gap between the footbed perimeter and the midsole perimeter in a region where the midsole height overlaps the footbed height (there is a gap between the footbed perimeter and the midsole perimeter insofar as shown or disclosed in the instant application; see figure 1b); a upper for securing the shoe to the foot of the wearer (“when fastening an upper to the now created rubber sole, staples can be driven through the upper and into the TPU strip to hold the upper in place” paragraph 44); an internal frame (6) in the footbed (see figures 1a, 2, and 3 showing the frame 6 in the footbed 7), the internal frame vertically positioned in a portion of the footbed height that is received in the midsole (see figures 1a, 2, and 3 showing that the frame 6 is located in a portion of the footbed 7 height that is received in the midsole 20); and a fastener extending through the midsole and into the lower edge of the upper and the internal frame (“when fastening an upper to the now created rubber sole, staples can be driven through the upper and into the TPU strip to hold the upper in place” paragraph 44).
Agati does not explicitly disclose: the upper having a lower edge received in said gap; and the fastener extending horizontally through the midsole and into the lower edge of the upper and the internal frame.
However, Schenkel teaches a method for attaching an upper to a sole in which the sole has a gap (“apertures 18 are provided or formed in the sole 14 in corresponding relation to the ends of the respective parts of the upper” column 2, lines 24-26), the upper has an lower edge received in said gap (see figures 1 and 2 showing the lower edge of the upper 12 being received in the apertures 18), and a fastener extending horizontally through the sole and into the lower edge of the upper (“staples 16 are used to affix the upper ends to the sole” column 2, lines 26-27; see figures 1 and 2 showing the staples extending horizontally).
Schenkel teaches analogous art to the instant application in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to put the lower edges of the upper in a gap in the sole and affix the upper to the sole using horizontally extending staples, as taught by Schenkel, as it would be the simple substitution of one known stapling method for another that would yield only the predictable result of attaching the shoe upper to the sole. Further, using the attachment method of Schenkel would increase the aesthetic appeal of the shoe as the ends of the upper would be hidden in the gaps.
Regarding claim 2, Agati as modified discloses: The shoe of claim 1, wherein fastener comprises a plurality of fasteners, and wherein the fasteners comprise staples (Agati, “when fastening an upper to the now created rubber sole, staples can be driven through the upper and into the TPU strip to hold the upper in place” paragraph 44; Examiner notes that the modification also uses staples).
Regarding claim 9, Agati as modified discloses: The shoe of claim 1, wherein the midsole height varies around the midsole perimeter (see figure 1a of Agati showing that the height of the midsole varies at different points along the perimeter, as the height increases in the heel area).
Regarding claim 10 as best understood by Examiner, Agati as modified discloses: The shoe of claim 1, wherein the midsole is a lightweight polymer (“a lightweight rubber sole” paragraph 40; rubber is a polymer, and it is lightweight insofar as has been claimed or described).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Agati /Schenkel, and further in view of Berg (US 2007/0186443).
Regarding claim 3, Agati as modified does not explicitly disclose: The shoe of claim 2, further comprising: a cover enclosing an upper surface and sides of the footbed so that the plurality of fasteners pass through the cover before entering the internal frame.
However, Berg teaches a footbed and a cover enclosing an upper surface and sides of the footbed (“the foot bed 154 is formed of a soft, resilient foam and is covered on its upper and side surfaces with a covering material, such as a synthetic leather. This covering material would cover the concave upper surface 162 and extend downwardly along the sides 164 so as to be trapped between the perimeter all 166 of the outer sole and the outer wall or side wall 164 of the inner sole 154” paragraph 98).
Berg teaches analogous art to the instant application in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to add a cover over the upper and side surfaces of the footbed of Agati, as taught by Berg, in order to provide a more comfortable surface for the user’s foot and to protect the footbed. Examiner notes that, as modified, since the cover extends down the sides of the footbed, the staples that extend horizontally through the footbed, the staples would pass through the cover before reaching the internal frame.
Claim(s) 4-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Agati /Schenkel, and further in view of Weber (US 10206449).
Regarding claim 4, Agati as modified discloses: The shoe of claim 1, wherein the footbed height extends between an upper surface in contact with the foot of the wearer and a lower surface (see figure 1a of Agati showing that the footbed has an upper surface and a lower surface),
Agati as modified does not explicitly disclose: the footbed further comprises at least one channel in the lower surface for receiving the internal frame.
However, Weber teaches a frame element (160) inserted between a foot bed and a midsole (see figure 10) and the lower surface of the foot bed has at least one channel in the lower surface for receiving the frame element (“foot bed 120, midsole layer 130, and/or outsole 140 may include projections and/or recesses that correspond to and/or conform to a shape of spring insert 160, such as to a shape of spring insert frame element(s) 172, spring insert frame rib(s) 173, and/or spring insert groove(s) 176” column 8, lines 49-53).
Weber teaches analogous art to the instant application in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to make channels in the lower surface of the footbed to receive the internal frame, as taught by Weber, in order to simplify manufacturing as the frame would not need to be suspended during the molding process.
Regarding claim 5, Agati as modified discloses: The shoe of claim 4, wherein the internal frame extends around an entirety of the footbed perimeter (see figure 1b of Agati showing that the internal frame extends around an entirety of the footbed perimeter).
Regarding claim 6, Agati as modified discloses: The shoe of claim 4, wherein the internal frame comprises a lateral frame and a medial frame that extend longitudinally along a respective side of the footbed (see figure 1b of Agati showing that the internal frame extends around an entirety of the footbed perimeter, therefore there is a lateral frame and a medial frame on either side of the footbed).
Regarding claim 7, Agati as modified discloses: The shoe of claim 4, wherein the internal frame is rigid material (Agati, “a strip of TPU 6” paragraph 45; Examiner notes that TPU is considered a suitable material for the frame in the instant application, therefore it is considered rigid).
Regarding claim 8, Agati as modified discloses: The shoe of claim 7, wherein the rigid material is thermoplastic polyurethane (TPU) (Agati, “a strip of TPU 6” paragraph 45).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Agati /Schenkel, and further in view of Tong (US 5185943).
Regarding claim 11, Agati as modified does not explicitly disclose: The shoe of claim 10, wherein the lightweight polymer is molded ethylene vinyl acetate (EVA).
However, Tong teaches an outsole for an article of footwear in which the outsole is made of ethylene vinyl acetate (EVA) (“An outsole is typically made of material such as rubber, polyurethane (PU), thermoplastic rubber (e.g., EVA) and the like. These materials are chosen for outsoles because they are wear resistant.” Column 2, lines 21-25).
Tong teaches analogous art to the instant application in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to make the sole 20 of Agati out of EVA, as taught by Tong, as Tong teaches that rubber and EVA are both suitable and wear resistant materials for soles (see Tong, column 2, lines 21-25), and 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. See MPEP 2144.07. Examiner notes that the limitation “molded” is being treated as a product-by-process limitation. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art (see MPEP § 2113).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Agati /Schenkel, and further in view of Longbottom (US 11064763).
Regarding claim 12, Agati as modified does not explicitly disclose: The shoe of claim 1, further comprising an outsole secured to the midsole opposite the footbed.
However, Longbottom teaches a sole with a top outsole (632) and a bottom outsole (700) with traction elements (702, 704) that is secured to the top outsole (“the bottom outsole 700 and the top outsole 632 (discussed above in connection with FIG. 6B) are the top and bottom, respectively, of the outsole” column 12, lines 54-57) opposite a cushioning member (“the cushion structure 608 may rest on top of the top outsole 632” column 13, lines 57-58).
Longbottom teaches analogous art to the instant application in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to add an additional bottom outsole with traction elements, as taught by Longbottom, underneath the sole 20 of Agati in order to “provide traction during ambulatory sporting activities such as walking or running along grass or dirt” (Longbottom, column 12, lines 12-14), which will improve speed and stability while playing sports and make it easier to change directions quickly.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Tsai (US 6751890), Cole (US 6021585), Yaw (US 6014821), and Chen (US 2003/0009909) teach footbeds that are located in a recess in the sole.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIANNA T DUCKWORTH whose telephone number is (571)272-1458. The examiner can normally be reached M-F 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Ostrup can be reached at 571-272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIANNA T. DUCKWORTH/Examiner, Art Unit 3732
/PATRICK J. LYNCH/Primary Examiner, Art Unit 3732