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 .
Response to Amendment
The amendments filed with the written response received on 12/04/2025 have been considered and an action on the merits follows. As directed by the amendment, claims 1-14 and 16-20 have been amended; claim 15 is canceled; claim 21 has been added. Accordingly, claims 1-14 and 16-21 are pending in this application
Because of the applicant's amendment, the following in the office action filed 09/16/2025, are hereby withdrawn: the claim objections.
Response to Amendment
Applicant's arguments, filed 12/04/2025, 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 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 16 and 17 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 16 depends on claim 14 and recites 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.
Similarly, claim 17 depends on claim 16 and recites, wherein the internal angle between the first surface and the second surface is greater than or equal to 100 degrees and less than or equal to 160 degrees.
However, claim 14, from which claims 16 and 17 depend from, has been amended to recite wherein the first plane control portion is arranged laterally on the sole and the second control portion is arranged medially on the sole. Therefore, it is unclear how the control portions can simultaneously be on lateral and medial sides of the sole, and also be “directly adjacent to each other.” Appropriate correction is required. For purposes of examination, only claim 14 will be examined on the merits and claims 16 and 17 will be disregarded until a correction to these claims is made since there is no reasonable way to reconcile claims 16 and 17 with claim 14, as a whole.
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 and 10-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2004/0148797 A1 to Nelson.
For claim 1, Nelson disclose a shoe (11), comprising: a sole (17); a first plane control portion arranged on the sole and comprising a first surface that is essentially planar (19); and a second plane control portion arranged on the sole and comprising a second surface that is essentially planar (18); 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 (abstract and para 0091).
It is further noted that claim limitations including, but not limited to: “configured to contact a third surface upon executing certain exercises,” and “configured to control foot positioning of a user during exercise” 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 section at the heel which, is interpreted as a plane control portion, one of ordinary skill in the art would have a reasonably expectation that Nelson’s surfaces (18 and 19) 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 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. 1-3) 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 11, Nelson discloses the shoe according to the claim 10, 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 a normal of the second plane control portion (figs. 1-3 wherein a normal of surface 19 is tilted in relation to a normal of 18).
For claim 12, Nelson discloses the shoe according to claim 11, wherein an internal angle between the first plane control portion and the second plane control portion is greater than or equal to 100 degrees and less than or equal to 160 degrees (paras 0019 and 0096).
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).
Claims 1 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 4,194,310 A to Bowerman.
For claim 1, Bowerman discloses a shoe (figs. 1-2), comprising: a sole (12); a first plane control portion arranged on the sole and comprising a first surface that is essentially planar (see annotated figs. 1-2 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. 1-2 above); 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 (col. 3, lines 15-26).
It is further noted that claim limitations including, but not limited to: “configured to contact a third surface upon executing certain exercises,” and “configured to control foot positioning of a user during exercise” 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 Bowerman discloses an outwardly projecting cleats with flat surfaces (col. 4, lines 40-42), interpreted as plane control portions, one of ordinary skill in the art would have a reasonably expectation that Bowerman’s outwardly projecting cleats are readily capable of performing the intended use of controlling foot position during exercise given the flat profile of the surfaces. The burden shifts to applicant to establish that the prior art does not possess the characteristic relied on (See MPEP2114(I)).
For claim 14, Bowerman discloses the shoe according to claim 1, wherein the first plane control portion is arranged laterally on the sole and the second plane control portion is arranged medially on the sole, wherein the first plane control portion and the second plane control portion are configured to control foot positioning of the user when doing side planks or when doing skater jumps (see annotated figs. 1-2 in the discussion for claim 1 above and see discussion above regarding statements of intended use and since Bowerman discloses the structure of the claimed feature, it would be reasonable to expect said structure to perform said function).
Claim 16 recites the shoe according to the claim 14, 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. However, this claim cannot be examined on the merits for the reasons outlined in the rejection of this claim under 35 USC § 112(b) above.
Claim 17 recites the shoe according to the claim 16, 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, this claim cannot be examined on the merits for the reasons outlined in the rejection of this claim under 35 USC § 112(b) above.
For claim 19, Bowerman discloses the shoe according to claim 1, 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 (col. 2, lines 57-61).
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.
Claims 1-3, 5-9, 13, 18, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,682,685 A to Terlizzi.
For claim 1, Terlizzi discloses a shoe (100), comprising: a sole (110); a first plane control portion arranged on the sole and comprising a first surface (front wall illustrated as a flattened surface of sole 110, see fig. 8); and a second plane control portion arranged on the sole and comprising a second surface that is essentially planar (bottom front surface of sole 110 is considered a surface that is considered essentially planar, fig. 9); 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 (abstract; col. 1, lines 59-67 and col. 5, lines 5-10).
It is further noted that claim limitations including, but not limited to: “configured to contact a third surface upon executing certain exercises,” and “configured to control foot positioning of a user during exercise” 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 third surface, and not an exercises itself. Since Terlizzi discloses a front wall, which is interpreted as a plane control portion, one of ordinary skill in the art would have a reasonably expectation that Terlizzi’s front wall is readily capable of performing the intended use of controlling foot positioning during exercise given the flat front profile of said front wall. The burden shifts to applicant to establish that the prior art does not possess the characteristic relied on (See MPEP2114(I)).
Terlizzi does not specifically disclose wherein the first surface is essentially planar. However, Terlizzi does teach that the front wall is of a flattened shape (see fig. 8) and is a shape that enables the dancer to stand on pointe (col. 5, lines 2-3). Terlizzi, therefore, discloses the general conditions of the claim.
Further, as best understood by applicant’s disclosure, the term “an essentially planar surface” is defined as being within ten percent of being planar. Further, applicant defines the plane control portions has having at least a 1 meter radius of curvature (para 0129 of applicant’s specification). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date wherein the front wall of Terlizzi is modified wherein the front wall is within ten percent of being planar and has a curvature of at least 1 meter radius 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, one skilled in the art would recognize the modification would improve stability and balance for the wearer, reducing localized pressure points, and distributing the load more evenly across the front of the shoe during on pointe use, a stated goal of Terlizzi (col. 5, lines 2-3).
For claim 2, the modified Terlizzi teaches the shoe according to claim 1, further comprising: a shoe upper coupled to the sole (102 is coupled to 110, see fig. 8), wherein the sole is an outsole and/or a midsole (110 is considered an outsole).
For claim 3, the modified Terlizzi teaches the shoe according to claim 1, 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 (see fig. 9 wherein the first surface is considered essentially perpendicular to a normal of the bottom of outsole 110).
For claim 5, the modified Terlizzi teaches the shoe according to claim 1, wherein at least one of the first surface or the second surface comprises a texture to enhance grip (see fig. 9 wherein the bottom of sole 110, considered the second surface, comprises a grooved textured surface).
For claim 6, the modified Terlizzi teaches 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. 8 wherein the front wall is without texture and would be considered smooth).
For claim 7, the modified Terlizzi teaches the shoe according to claim 1, wherein at least one of the first surface or the second surface has a surface texture (smooth front wall of 110) different than a surface texture of a remaining sole surface or a shoe upper (see fig. 9 wherein the bottom back surface of 110 is not smooth and comprises ridges and grooves).
For claim 8, the modified Terlizzi teaches the shoe according to claim 1, wherein the third surface is essentially planar (one skilled in the art would understand a floor can be planar and that the floor is not a structural component of the shoe).
For claim 9 the modified Terlizzi teaches 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 wherein the front wall is arranged proximally on a toe portion and is interpreted as being configurable to control foot positioning of the user when doing activities, including push-ups).
For claim 13, the modified Terlizzi teaches 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. 8 and 9 wherein the front wall of 110 and the bottom from of 110 are formed integrally with the sole 110).
For claim 18, the modified Terlizzi 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 (bottom front surface of sole 110) is configured for a wearer to walk and step on the ground. As such, the surface must be long and wide enough to cover the front foot of a wearer wearing the shoe (100). Therefore, Terlizzi 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 walking, accommodating different foot sizes, and since sole surfaces are sized in accordance with typical foot dimensions.
For claim 20, the modified Terlizzi 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, the modified Terlizzi does teach the first plane control portion has a curvature of at least 1 meter radius (see discussion for claim 1 above). Therefore, the modified Terlizzi 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 curvature of at least 1 meter radius is modified to a radius of curvature of at least 5 meter 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 more flattened surface increases stability, balance, and comfort during on pointe movements, a goal of Terlizzi (col. 5, lines 2-3). One of ordinary skill in the art would recognize increasing the radius of curvature predictably results in a flatter surface and involves optimizing a known, result effective variable.
For claim 21, the modified Terlizzi 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, the modified Terlizzi does teach the first plane control portion has a curvature of at least 1 meter radius (see discussion for claim 1 above). Therefore, the modified Terlizzi 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 curvature of at least 1 meter radius is modified to a radius of curvature of at least 50 meter 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 more flattened surface increases stability, balance, and comfort during on pointe movements, a goal of Terlizzi (col. 5, lines 2-3). One of ordinary skill in the art would recognize increasing the radius of curvature predictably results in a flatter surface and involves optimizing a known, result effective variable.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Terlizzi as applied to claim 1 above, and further in view of US 2023/0053583 A1 to Sackett.
For claim 4, Terlizzi discloses the shoe according to claim 1, wherein at least one of the first surface or the second surface has a surface area (surface area of front wall).
Terlizzi does not specifically disclose wherein the front surface area is of at least 2 cm^2.
However, attention is 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 Terlizzi 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, Terlizzi 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 Terlizzi 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 toe stability to a dancer, is the natural and practical result of ballet dancers shoe toe portions when wearers are on their toes, and for improving comfort during performance.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached at (571) 272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERICK I LOPEZ/Examiner, Art Unit 3732
/KHOA D HUYNH/Supervisory Patent Examiner, Art Unit 3732