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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 is rejected because of the limitations “the two openings are separated by a bridge portion of the polymer element that extends from a midfoot region of the sole element to a toe region of the sole element” lacks support in the original specification which filed 03-19-2025; therefore such lack of detailed support in the original disclosure constitutes new matter.
Claim 20 is rejected because of the limitations “a central stud positioned on the bridge portion of the polymer element” lacks support in the original specification which filed 03-19-2025; therefore such lack of detailed support in the original disclosure constitutes new matter.
Any remaining claims are rejected as depending from a rejected base claim.
In the art rejections below the claims have been treated as best understood by the examiner.
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) 1-4, 7-10, 13, 17, and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gerber (2012/0036740) in view of Auger et al. (2013/0067765).
Regarding claim 1, Gerber teaches a sole element for an article of footwear figs 5-10, the sole element comprising:
a composite element (members 20 and 120, para 0028);
a polymer element (para 0025) over injected (members 5 and 105, para 0051) on the composite element and at least partially covering the composite element; and
opening (members 15 and 115) formed in the polymer element such that a portion of the sole element other than the polymer element is exposed through the opening in a ground-facing direction, wherein the opening extends from a midfoot region of the sole element to a toe region of the sole element (figs 5-10).
Gerber does not teach two openings are separated by a bridge.
Auger teaches a sole having two openings are separated by a bridge (fig 5 and 9, members 125, para 0056).
It would have been obvious to one of the ordinary skill in the art before the effective filling date of the claim invention to modify the polymer element of Gerber by adding two openings and bridge, as taught by Auger, in order to reinforce the sole for a wide variety of athletic activities.
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Regarding claim 2, the modified sole Gerber-Auger discloses at least one stud dome (Gerber, members 16 and 116) formed on the polymer element for carrying a stud tip at a position wherein the stud tip does not overlap with the composite element (Gerber, figs 5-10).
Regarding claim 3, the modified sole Gerber-Auger discloses the sole element comprises studs comprising the stud domes, and the studs are configured to interact with each other to influence bending of the sole element (Gerber, figs 5-10).
Regarding claim 4, the modified sole Gerber-Auger discloses 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 (Gerber, fig 2, members 16c to j), and the sole element comprises a slit arranged outside of an area defined between the second row and the third row (fig 7 annotated above).
Regarding claim 7, the modified sole Gerber-Auger discloses the polymer element at least partially covers a ground-facing surface of the composite element (Gerber, figs 5-10).
Regarding claim 8, the modified sole Gerber-Auger discloses insole board attached to the polymer element (Gerber, member 4).
Regarding claim 9, the modified sole Gerber-Auger discloses a slit formed in the composite element, wherein the slit is arranged substantially along a longitudinal direction of the sole element (fig 7 annotated above).
Regarding claim 10, the modified sole Gerber-Auger discloses a shoe comprising the sole element of claim 1 (Gerber, fig 1).
Regarding claim 13, the modified sole Gerber-Auger discloses the polymer element comprises a ground facing surface and ribs (Gerber, members 16a to b and i) that are formed on the ground facing surface.
Regarding claim 17, the modified sole Gerber-Auger 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 (Gerber, figs 5-10).
Regarding claim 19, the modified sole Gerber-Auger disclose stud tips connected to the polymer layer (Gerber, fig 2, member 16a to j).
Regarding claim 20, the modified sole Gerber-Auger discloses a central stud positioned on the bridge portion of the polymer element (Auger, fig 9, member 906).
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) 5-6 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gerber (2012/0036740) in view of Auger et al. (2013/0067765) as applied to claim 1 above, and further in view of Simmon et al. (2017/0157893).
Regarding claims 5-6, the modified sole Gerber-Auger teaches all limitations except the composite element comprises an anisotropic bending property, 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. Simmons teaches in fig 2-3 and 13 and para 0065 discloses that the layers can be interchanged in direction, such as modulus of elasticity (i.e. the measure of the stiffness of a material) of layer 72 can be greater than, less than or equal to the modulus of elasticity of layer 70 and para 0072 discloses that the directional bending stiffness in one direction can be low and the other direction can be high.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to understand and utilize that the second bending stiffness (downward) is lower than the first bending (upward) stiffness in order to improve the athlete's on-field performance and reduced fatigue (para 0072).
Regarding claim 18, the modified sole Gerber-Auger teaches all limitations the composite element has a first bending stiffness in a first direction away from a neutral position to a predetermined angle and a second bending stiffness in the first direction beyond the predetermined angle, wherein the first bending stiffness is less than the second bending stiffness, and the first bending stiffness remains constant throughout a range defined from the neutral position to the predetermined angle.
However Simmons teaches in fig 2-3 and 13 and para 0065 discloses that the layers can be interchanged in direction, such as modulus of elasticity (i.e. the measure of the stiffness of a material) of layer 72 can be greater than, less than or equal to the modulus of elasticity of layer 70 and para 0072 discloses that the directional bending stiffness in one direction can be low and the other direction can be high.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to understand and utilize that the second bending stiffness (downward) in the neutral direction is lower than the first bending (upward) stiffness in order to improve the athlete's on-field performance and reduced fatigue (para 0072).
Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gerber (2012/0036740) in view of Auger et al. (2013/0067765) as applied to claim 1 above, and further in view of Baucom et al. (2017/0164691).
Regarding claim 11, the modified sole Gerber-Auger teaches all limitations except the composite element is located only in the forefoot region of the sole element.
Baucom teaches a sole structure having a composite element is located only in the forefoot region (fig 2, member 300).
It would have been obvious to one of ordinary skill in the art before the effective date of the claim invention to modify the structure of Gerber by only have the composite element in the forefoot region, as taught by Baucom, in order to only support the specific area as needed.
Regarding claim 12, the modified sole Gerber-Auger teaches all limitations except 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.
Baucom teaches a sole structure having 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 2, member 124).
It would have been obvious to one of ordinary skill in the art before the effective date of the claim invention to modify the structure of Gerber by adding the slit of Baucom, in order to provide the flexibility between the lateral and medial for the foot.
Claim(s) 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gerber (2012/0036740) in view of Auger et al. (2013/0067765) as applied to claim 1 above, and further in view of Peikert (2011/0167678).
Regarding claim 14, the modified sole Gerber-Auger teaches all limitations except the ribs extend into the midfoot region. Peikert teaches a sole structure having ribs extend into the midfoot region (fig 2, member 33) It would have been obvious to one of ordinary skill in the art before the effective date of the claim invention to modify the structure of Gerber by adding ribs of Peikert, in order to provide more support for the midfoot.
Regarding claim 15, the modified sole Gerber-Auger teaches all limitations except the ribs extend into the midfoot region. Peikert teaches a sole structure having polymer element comprises a ground- facing surface and a lattice structure that is formed on the ground-facing surface (fig 2, member 33).
It would have been obvious to one of ordinary skill in the art before the effective date of the claim invention to modify the structure of Gerber by adding lattice structure of Peikert, in order to reduce the weight for the sole.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gerber (2012/0036740) in view of Auger et al. (2013/0067765) as applied to claim 1 above, and further in view of Amis et al. (2017/0202301).
Regarding claim 16, the modified sole Gerber-Auger teaches all limitations except the composite element comprises a ground facing surface, and wherein 50%-65% of the ground facing surface is covered by the polymer element. Amis teaches a sole structure (fig 1C) having composite element (member 11) comprises a ground facing surface, and wherein 50%-65% of the ground facing surface is covered by the polymer element (members 14-15).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to modify Simmons sole by having the polymer element cover more than 50% of the composite element, as taught by Amis, in order to permit adaptation to different types of sports or activities would be beneficial. In addition, it appears that applicant does not provide any criticality or unexpected results why the second portion is about 50% to 65% of the first portion. More specifically, such an inquiry should focus on the diverse functions attributed to each element as well as the teachings in the specification as to how such a component could be implemented. One of ordinary skill in the art would be capable of determining the proper ratio without undue experimentation.
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 1-2, 5-8, 10-11, and 18 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11,944,158 in view of Auger et al. (2013/0067765). 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 composite and polymer elements with anisotropic bending property; wherein 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, and at least one opening formed in the polymer to expose part of the composite element.
U.S. Patent No. 11,944,158 does not teach two openings are separated by a bridge.
Auger teaches a sole having two openings are separated by a bridge (fig 5 and 9, members 125, para 0056).
It would have been obvious to one of the ordinary skill in the art before the effective filling date of the claim invention to modify the polymer element of Gerber by adding two openings and bridge, as taught by Auger, in order to reinforce the sole for a wide variety of athletic activities.
Response to Arguments
Applicant’s arguments, dated 01-30-2026, with respect to the drawing objection have been fully considered and are persuasive. The objection has been withdrawn due to applicant amendments.
Applicant’s arguments, dated 01-30-2026, with respect to the rejection of claims under 35 U.S.C §112(a) have been fully considered, and are persuasive. The rejection to the claims has been withdrawn due to the amendments to the claims.
Applicant's arguments, date 01-30-2026, with respect to the rejections of claims under 35 U.S.C §102 have been fully considered, but they are not persuasive because applicant argues that the prior art does not teach the amended limitations. However, this argument is not commensurate with the rejected claims, as the limitations have not been previously presented and they have been address as analyzed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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