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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06-25-2026 has been entered.
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, 5, 7-8, 10, 13-17, and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Paulson et al. (2022/021142).
Regarding claim 1, Paulson discloses a sole element for an article of footwear, the sole element (figs 1-21) comprising:
a composite element (member 60, para 0079);
a polymer element (members 40 and 51-52) at least partially covering the composite element;
a first opening (member 55 on the right) formed in the polymer element in a medial side of a forefoot region of the sole element; and
a second opening (member 55 on the left) formed in the polymer element in a lateral side of the forefoot region of the sole element;
wherein a portion of the polymer element is disposed between the first opening and the second opening (fig 3).
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Regarding claim 2, Paulson discloses at least one stud dome formed on the polymer element for carrying a stud tip at a position wherein the stud tip does not overlap with the composite element (fig 16 annotated above).
Regarding claim 3, Paulson discloses the sole element comprises studs comprising the stud domes member (270), and the studs are configured to interact with each other to influence bending of the sole element.
Regarding claim 5, Paulson discloses the composite element comprises an anisotropic bending property (i.e. carbon strand, para 0079).
Regarding claim 7, Paulson discloses the polymer element at least partially covers a ground-facing surface of the composite element (fig 6).
Regarding claim 8, Paulson discloses insole board attached to the polymer element (member 30).
Regarding claim 10, Paulson discloses a shoe comprising the sole element of claim 1 (fig 1).
Regarding claim 13, Paulson discloses the polymer element comprises a ground facing surface and ribs (member 52) that are formed on the ground facing surface.
Regarding claim 14, Paulson discloses a midfoot region, wherein the ribs extend into the midfoot region (fig 5).
Regarding claim 16, Paulson discloses the composite element comprises a ground facing surface, and wherein 50%-65% of the ground facing surface is covered by the polymer element (fig 4).
Regarding claim 17, Paulson discloses the composite element comprises a ground-facing surface and a top surface, wherein the top surface is opposite the ground facing surface and the top surface is not covered by the polymer element (fig 4).
Regarding claim 19, Paulson discloses stud tips connected to the polymer layer (fig 11).
Regarding claim 20, Paulson discloses a central stud positioned in the forefoot region (fig 16 annotated above).
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(s) 4, 9, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Paulson et al. (2022/021142).
Regarding claim 4, Paulson teaches all limitation of the claim and further teaches in another embodiment the sole element comprises studs comprising the stud domes, the studs are arranged in a first row, a second row, and a third row in order of distance from a front end of the sole element (fig 16), and the sole element comprises a slit (member 305S) arranged outside of an area defined between the second row and the third row. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to add the slit into the composite element in order to allow the flexibility across the shoe.
Regarding claim 9, Paulson teaches all limitation of the claim and further teaches in another embodiment a slit (member 360S) formed in the composite element, wherein the slit is arranged substantially along a longitudinal direction of the sole element (fig 17). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to add the slit into the composite element in order to allow the flexibility across the shoe.
Regarding claim 12, Paulson teaches all limitation of the claim and further teaches in another embodiment a central stud and further comprising a slit formed in the composite element, wherein the slit extends from an edge of the composite element to the central stud (fig 16 annotated above). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to add the slit into the composite element in order to allow the flexibility across the shoe.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Paulson et al. (2022/021142) as applied to claim 1 above, and further in view of Baucom et al. (2017/0164691).
Regarding claim 11, Paulson teaches all limitation of the claim and Baucom teaches a sole structure having the composite element (fig 2, member 300) is located only in the forefoot region of the sole element. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to modify the composite element being only in the forefoot region of the sole element, as taught by Baucom, in order to reduce the weight of the shoe.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Paulson et al. (2022/021142) as applied to claim 1 above, and further in view of Cook et al. (2016/000180).
Regarding claim 15, Paulson teaches all limitation of the claim and Cook teaches a sole structure having the polymer element comprises a ground-facing surface and a lattice structure (fig 18, members 106 and 108) that is formed on the ground-facing surface. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to modify the polymer element to have a lattice structure, as taught by Cook, in order to increase the traction for the sole.
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 1-12 of U.S. Patent No. 11,944,158. Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim essentially the same elements such as a composite element, a polymer element, and openings, wherein the composite element has a first bending stiffness for bending upwards in a toe region of the sole element and a second bending stiffness for bending downwards in the toe region, wherein the second bending stiffness is lower than the first bending stiffness.
Conclusion
The prior art made of record and not relied upon, is listed on the attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BAO-THIEU L NGUYEN whose telephone number is (571)270-0476. The examiner can normally be reached M-F 7am-3pm.
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BAO-THIEU L. NGUYEN
Primary Examiner
Art Unit 3732
/BAO-THIEU L NGUYEN/Primary Examiner, Art Unit 3732
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