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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/27/2026 has been entered.
Response to Amendment
The amendments filed with the written response received on 04/27/2026 have been considered and an action on the merits follows. As directed by the amendment, claims 1 and 16 have been amended; claims 11-12 and 14-15 are canceled; and claims 22-24 have been added. Accordingly, claims 1-10, 13, and 16-24 are pending in this application.
Because of the applicant's amendment, the following in the office action filed 01/27/2026 are withdrawn: the prior rejection of claims under 35 USC § 112(b).
Response to Argument
Applicant's arguments, filed 04/27/2026, with respect to the rejection of claims under 35 USC § 102 and 35 USC § 103 have been considered but are moot because the arguments do not apply to the current grounds of rejection. Applicant's arguments, which appear to be drawn only to the newly amended limitations and previously presented rejections, have been considered but are moot in view of the updated ground of rejection.
Claim Objections
Claims 22-23 are objected to because of the following informalities:
Claim 22 recites “the first plane control portion tilts away from the third surface.” It is suggested the claim is rephrased to recite “the first plane control portion is configured to tilt away from the third surface” so the functional relationship between the elements is more clearly established and since the third surface is not a part of the shoe.
For claim 23, it is suggested the claim is rephrased to “The shoe according to claim 22, wherein the sole comprises a tread surface….” Followed by the intended use/function of the tread surface.
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.
Claims 1-10, 13, and 16-24 are 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.
Claim 1 recites “wherein the first plane control portion and the second plane control portion do not engage with a ground surface when standing or walking.” However, it is unclear under which conditions “standing or walking” are evaluated or what degree of contact, if any, constitutes “engaging” the ground surface. It is also unclear whether incidental or intermittent contact during different standing or walking positions would satisfy or fall outside the claim, resulting in uncertainty as to the metes and bounds of the claimed subject matter.
Claim 22 appears to be positively claiming the third surface as a part of the invention when the claims are only directed to a shoe structure. Therefore, the scope of the claim is unclear since the claim is directed to a shoe and not the ground.
Claim 23 recites “a tread surface of the sole is disengaged from the third surface.” Claim 23 also appears to be positively claiming the third surface as a part of the invention when the claims are only directed to a shoe structure. Therefore, the scope of the claim is unclear since the claim is directed to a shoe and not the ground.
Claims depending from claims rejected to under this section are similarly rejected to for their dependence on a claim rejected to under this section.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 8 recites “wherein the third surface is essentially planar.” However, third surface is the ground. Not the shoe. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 2, 6-8, 10, 13, 16, 22 -24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2004/0148797 A1 to Nelson.
For claim 1, Nelson discloses a shoe, comprising:
a sole (56);
a first plane control portion arranged on the sole and comprising a first surface that is essentially planar (see annotated fig. 16 below); and
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a second plane control portion arranged on the sole and comprising a second surface that is essentially planar (see annotated fig. 16 above);
wherein the first plane control portion and the second plane control portion share a common edge (see annotated fig. 16 above),
wherein the first plane control portion and the second plane control portion do not engage with a ground surface when standing or walking, and wherein the first surface and the second surface are each configured to contact a third surface upon executing certain exercises and are configured to control foot positioning of a user during execution of the certain exercises (see fig. 1 and 3, for example).
It is further noted that claim limitations including, but not limited to: “wherein the first plane control portion and the second plane control portion do not engage with a ground surface when standing or walking,” “wherein the first surface and the second surface are each configured to contact a third surface upon executing certain exercises and are configured to control foot positioning of a user during execution of the certain exercises,” have been fully considered and are being interpreted as statements of intended use. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim (See MPEP 2114(II)). Examiner notes italicized limitations in the prior art rejection are functional and do not positively recite a structural limitation, but instead require an ability to so perform. In this case, the claims are directed to a shoe apparatus, not a contacting surface, and not an exercise itself. Since Nelson discloses an angled sections at the heel, which are interpreted as a plane control portions, one of ordinary skill in the art would have a reasonably expectation that Nelson’s surfaces (in annotated fig. 16 above) are readily capable of performing the intended use of controlling foot position during exercise given the flat profile of each surface. The burden shifts to applicant to establish that the prior art does not possess the characteristic relied on (See MPEP2114(I)).
For claim 2, Nelson discloses the shoe according to claim 1, further comprising: a shoe upper coupled to the sole (14), wherein the sole is an outsole and/or a midsole (sole).
For claim 6, Nelson discloses the shoe according to claim 1, wherein at least one of the first surface or the second surface is smooth to reduce grip or to allow smoother gliding on a surface (see fig. 17 wherein the texture is considered smooth).
For claim 7, Nelson discloses the shoe according to claim 1, wherein at least one of the first surface or the second surface has a surface texture different than a surface texture of a remaining sole surface or a shoe upper (paras 0019, 0036, 0046, and 0117).
For claim 8, Nelson discloses the shoe according to claim 1, wherein the third surface is essentially planar (22, fig. 1).
For claim 10, Nelson discloses the shoe according to claim 1, wherein the first plane control portion and the second plane control portion are arranged proximally on a heel portion (figs. 16) and are configured to control foot positioning of the user when doing forward lunges or when doing handstand pushups (also see discussion above regarding statements of intended use and since Nelson discloses the structure of the claimed footwear, it would be reasonable to expect said structure is configured to perform said functions).
For claim 13, Nelson discloses the shoe according to claim 1, wherein the first plane control portion and the second plane control portion are formed integrally with the sole (see figs. 103 wherein surfaces 18 and 19 are formed integrally with the sole 17).
For claim 16, Nelson discloses the shoe according to the claim 1, wherein the first plane control portion and the second plane control portion are directly adjacent to each other, and a normal of the first plane control portion is tilted in relation to the normal of the second plane control portion (see figs. 16-17).
For claim 22, Nelson discloses the shoe according to claim 1, wherein when the first plane control portion tilts away from the third surface on the common edge, the common edge is configured to guide the shoe from the first plane control portion to the second plane control portion such that the second plane control portion contacts the third surface (see annotated fig. 16 above wherein the illustrated first plane control portion is configurable to tilt away from the ground on the edge and guide the shoe from the first plane control portion to the second plane control portion) (also see discussion regarding intended use claims above).
For claim 23, Nelson teaches the shoe according to claim 22, wherein, during movement on the third surface between the first plane control portion and the second plane control portion, a tread surface of the sole is disengaged from the third surface (See fig. 3 as an example of the tilted shoe) (also see discussion regarding intended use claims above).
For claim 24, Nelson teaches the shoe according to claim 1, wherein during execution of the certain exercises, the first surface is configured to contact the third surface prior to the second surface (any exercise or movement wherein the first surface is configured to contact the third surface prior to the second surface) (also see discussion regarding intended use claims above).
Claims 1 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,826,351 A to Tsuji.
For claim 1, Tsuji discloses a shoe, comprising: a sole (abstract); a first plane control portion arranged on the sole and comprising a first surface that is essentially planar; and a second plane control portion arranged on the sole and comprising a second surface that is essentially planar; (See annotated fig. 8 below).
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wherein the first plane control portion and the second plane control portion share a common edge (see annotated fig. 8 above), wherein the first plane control portion and the second plane control portion do not engage with a ground surface when standing or walking, and wherein the first surface and the second surface are each configured to contact a third surface upon executing certain exercises and are configured to control foot positioning of a user during execution of the certain exercises (fig. 5 and 6).
It is further noted that claim limitations including, but not limited to: “wherein the first plane control portion and the second plane control portion do not engage with a ground surface when standing or walking,” “wherein the first surface and the second surface are each configured to contact a third surface upon executing certain exercises and are configured to control foot positioning of a user during execution of the certain exercises,” have been fully considered and are being interpreted as statements of intended use. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim (See MPEP 2114(II)). Examiner notes italicized limitations in the prior art rejection are functional and do not positively recite a structural limitation, but instead require an ability to so perform. In this case, the claims are directed to a shoe apparatus, not a contacting surface, and not an exercise itself. Since Nelson discloses an angled sections at the heel, which are interpreted as a plane control portions, one of ordinary skill in the art would have a reasonably expectation that Nelson’s surfaces (in annotated fig. 16 above) are readily capable of performing the intended use of controlling foot position during exercise given the flat profile of each surface. The burden shifts to applicant to establish that the prior art does not possess the characteristic relied on (See MPEP2114(I)).
For claim 9, Tsuji discloses the shoe according to claim 1, wherein at least one of the first plane control portion or the second plane control portion is arranged proximally on a toe portion and is configured to control foot positioning of the user when doing push-ups (see fig. 8) (See discussion above regarding statements of intended use).
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 3, 5, 17, 18, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Nelson.
For claim 3, Nelson discloses the shoe according to claim 1, but does not specifically disclose wherein a normal of at least one of the first surface or the second surface is essentially perpendicular to a normal of a tread surface of the shoe.
However, in a separate embodiment, Nelson teaches the angle measured from the bottom surface to the included surface may be about 80 degrees (para 0096) for purposes of optimizing the degree of angle based on the specific activity performed by the wearer (para 0024). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the first embodiment of Nelson is modified wherein a normal of at least one of the first surface or the second surface is essentially perpendicular to a normal of a tread surface of the shoe, about 80 degrees, for purposes of optimizing the degree of angle based on the specific activity performed by the wearer, as taught by Nelson (paras 0024 and 0096).
For claim 5, Nelson discloses the shoe according to claim 1, but does not specifically disclose wherein at least one of the first surface or the second surface comprises a texture to enhance grip.
However, in a separate embodiment, Nelson teaches the inclined surface can comprise a grip (64) to help against falling when engaging said inclined surfaces (para 0106). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein at least one of the first surface or the second surface comprises a texture to enhance grip and to help against falling when engaging said inclined surfaces, as taught by Nelson (para 0106).
For claim 17, Nelson discloses the shoe according to claim 16, but does not specifically disclose wherein an internal angle between the first surface and the second surface is greater than or equal to 100° and less than or equal to 160°.
However, in a separate embodiment, Nelson teaches the angle measured from the bottom surface to the included surface may be about 80 degrees (para 0096) for purposes of optimizing the degree of angle based on the specific activity performed by the wearer (para 0024). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the first embodiment of Nelson is modified wherein a normal of at least one of the second surface is essentially perpendicular to a normal of a tread surface of the shoe, about 80 degrees, and therefore increasing the angle degree between the first and the second surface, for purposes of optimizing the degree of angle based on the specific activity performed by the wearer, as taught by Nelson (paras 0024 and 0096). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein an internal angle between the first surface and the second surface is greater than or equal to 100° and less than or equal to 160° as a matter of routine optimization to provide a desired degree of stability when the shoe is tilted during the activity performed by Nelson. Selecting an appropriate angular relationship would have been a predicable design choice based on the particular activity with no unexpected results.
For claim 18, Nelson teaches the shoe according to claim 1, but does not specifically disclose wherein at least one of the first plane control portion or the second plane control portion has a length of at least 3 cm, and a width of at least 0.5 cm.
However, one of ordinary skill in the art would readily understand the second plane control portion is configured to engage the ground. As such, the surface must be long and wide enough to the support the weight of the wearer wearing the shoe during the disclosed activity. Therefore, Nelson teaches the general conditions of the claim. It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the second plane control portion has a length of at least 3 cm, and a width of at least 0.5 cm, since it is not inventive to discover the optimum or workable range by routine experimentation (See MPEP 2144.05(II)). In this case, there are relevant facts for supporting a modification to the claimed range by routine optimization. Specifically, providing stability during the disclosed activity, accommodating different foot sizes, and since sole surfaces are sized in accordance with typical foot dimensions.
For claim 20, Nelson teaches the shoe according to claim 1, but does not specifically disclose wherein at least one of the first plane control portion or the second plane control portion has a radius of curvature of at least 5 m.
However, Nelson teaches at least the second plane control portion is a “relatively flat” surface (Abstract). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein at least the second control surface has a radius of curvature of at least 5 m as a matter of routine optimization to provide a transition between said surface and the sole while maintaining the desired stability of the shoe (See MPEP 2144.05(II)). One of ordinary skill in the art would readily understand selecting a relatively large radius for the disclose “relatively flat” surface is a predictable design choice within the ordinary skill in the art and said change is absent any unexpected results.
For claim 21, Nelson teaches the shoe according to claim 1, but does not specifically disclose wherein at least one of the first plane control portion or the second plane control portion has a radius of curvature of at least 50 m.
However, Nelson teaches at least the second plane control portion is a “relatively flat” surface (Abstract). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein at least the second control surface has a radius of curvature of at least 50 m as a matter of routine optimization to provide a transition between said surface and the sole while maintaining the desired stability of the shoe (See MPEP 2144.05(II)). One of ordinary skill in the art would readily understand selecting a relatively large radius for the disclose “relatively flat” surface is a predictable design choice within the ordinary skill in the art and said change is absent any unexpected results.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Nelson as applied to claim 1 above, and further in view of US 2023/0053583 A1 to Sackett.
For claim 4, Nelson discloses the shoe according to claim 1, wherein at least one of the first surface or the second surface has a surface area (areas in figs. 16 and 17).
Nelson does not specifically disclose wherein the front surface area is of at least 2 cm^2.
However, Nelson does teach a reduced contact area will adjust the friction properties of said areas during activities (para 0021).
Attention is also directed to Sackett teaching an analogous article of footwear with a flattened front section (105) (fig. 1b). Specifically, Sackett teaches the total area of the flattened front section is about 15 cm^2 (para 0052). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein Nelson would be further modified wherein the surface area is about 15 cm^2, as taught by Sackett, for providing a stable contacting surface for a dancer as is known in the art. As modified, Nelson discloses the general conditions of the claim. It would have been obvious to one of ordinary skill in the art before the effective filing date wherein Nelson would be further modified wherein the surface area is of at least 2 cm^2 since it is not inventive to discover the optimum or workable range by routine experimentation (See MPEP 2144.05(II)). In this case, there are relevant facts for supporting a modification to the claimed range by routine optimization. Specifically, providing a surface area above the claimed size provides enhanced stabilization when contacting any of the said surfaces, improving comfort during activity.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Nelson as applied to claim 1 above, and further in view of US 2003/0084592 A1 to Ho.
For claim 19, Nelson teaches the shoe according to claim 1, but does not specifically disclose wherein at least one of the first plane control portion or the second plane control portion is made of one or more of thermoplastic polyurethane (TPU), liquid TPU, ethylene-vinyl acetate (EVA), rubber, or foam composite. However, Nelson does teach the plane control portions can be made of polyethylene (para 0036).
Attention is also directed to Ho teaching an article of footwear comprising an outsole (14) that may be constructed of polyethylene or polyurethane for purposes of providing enhanced durability and wear resistance to areas like the heel of the outsole (paras 0008 and 0028 of Ho). An express suggestion to substitute one material with another material is not necessary when the modification is routine and both materials are well known in the art, to those of ordinary skill. It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the polyethylene material is substituted for Ho’s polyurethane since the modification would amount to a simple substitution of known materials for a predictable result. Here, the substitution from polyethylene to thermoplastic polyurethane would yield the predictable result of providing enhanced durability and wear resistance to areas like the heel of the outsole, as taught by Ho (paras 0008 and 0028 of Ho), without requiring more than ordinary skill in the art to accomplish (see MPEP 2143(I)(B)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICK I LOPEZ whose telephone number is (571)272-3262. The examiner can normally be reached Monday - Friday: 9:00am - 5:30pm EST.
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/ERICK I LOPEZ/Examiner, Art Unit 3732
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