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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 03-25-2025 are acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 5 and 15 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 5 and 15 are rejected because of the limitations “the chassis extending into the first aperture and engaging the cushioning element proximate to the first aperture and the outsole extending into the second aperture and engaging the cushioning element proximate to the second aperture” lacks support in the original specification which filed 03-25-2025; therefore such lack of detailed support in the original disclosure constitutes new matter.
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.
Claims 1-20 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.
Claims 1 and 11 are rejected because of the limitations "a carriage disposed between the chassis and the outsole." It is not clear how the carriage (170) can be disposed between the chassis (106) and the outsole (104) since figure 5 shows that the carriage is part of the chassis (i.e. carriage is the chassis itself).
Claim 5 and 15 are rejected because of the limitations “the chassis extending into the first aperture” It is not clear how the chassis (160) can extend into the aperture since fig 5 shows that the aperture is part of the chassis.
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, 7-14, and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kilgore et al. (5,343,639) in view of Asciolla (2002/0178620).
PNG
media_image1.png
178
385
media_image1.png
Greyscale
Regarding claim 1, Kilgore teaches a sole structure for an article of footwear, the sole structure (figs 1-19b) comprising:
a chassis (member 22);
an outsole (member 20) extending from an anterior end of the chassis to a posterior end of the chassis; and
a carriage (member 26) disposed between the chassis and the outsole and including a pair of frames spaced apart from and connected to each other by a flexure, the frames converging toward one another in a direction from a heel region of the sole structure to a forefoot region of the sole structure (figs 1 and 11d annotated above).
Asciolla teaches a shoe having an outsole (fig 1, member 20 and 22) removably coupled to the chassis (fig 1, member 16, para 0025 to 0026).
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 shoe of Kilgore by making the parts removably coupled to another, as taught by Asciolla, in order to just replace the damage part as needed (Acciolla, para 00276).
Regarding claim 2, the modified footwear Kilgore-Asciolla discloses a cushioning element (Kilgore, member 32) disposed between the chassis and the outsole.
Regarding claim 3, the modified footwear Kilgore-Asciolla discloses the cushioning element is disposed within the carriage between the pair of frames (fig 11d annotated above).
Regarding claim 4, the modified footwear Kilgore-Asciolla discloses the cushioning element tapers in a direction away from the flexure (fig 11d annotated above).
Regarding claim 7, the modified footwear Kilgore-Asciolla discloses the flexure is a living hinge (fig 11d annotated above).
Regarding claim 8, the modified footwear Kilgore-Asciolla discloses the flexure includes an arcuate portion extending between a first frame of the pair of frames and a second frame of the pair of frames (fig 11d annotated above).
Regarding claim 9, the modified footwear Kilgore-Asciolla discloses the arcuate portion includes a convex surface facing a posterior end of the sole structure and a concave surface facing an anterior end of the sole structure (fig 11d annotated above).
Regarding claim 10, the modified footwear Kilgore-Asciolla discloses an article of footwear incorporating the sole structure of Claim 1 (fig 1).
Regarding claim 11, Kilgore teaches a sole structure for an article of footwear, the sole structure (figs 1-19b) comprising:
a chassis (member 22);
an outsole (member 20) extending from an anterior end of the chassis to a posterior end of the chassis; and
a carriage (member 26) disposed between the chassis and the outsole and including a pair of frames spaced apart from each other in a direction extending from the chassis to the outsole, the pair of frames connected at a first end of each frame of the pair of frames by an arcuate portion having a convex surface facing a posterior end of the sole structure and a concave surface opposing an anterior end of the sole structure (fig 11d annotated above).
Regarding claim 12, the modified footwear Kilgore-Asciolla discloses a cushioning element (Kilgore, member 32) disposed between the chassis and the outsole.
Regarding claim 13, the modified footwear Kilgore-Asciolla discloses the cushioning element is disposed within the carriage between the pair of frames (fig 11d annotated above).
Regarding claim 14, the modified footwear Kilgore-Asciolla discloses the cushioning element tapers in a direction away from the arcuate portion (fig 11d annotated above).
Regarding claim 17, the modified footwear Kilgore-Asciolla discloses the arcuate portion is a living hinge (fig 11d annotated above).
Regarding claim 18, the modified footwear Kilgore-Asciolla discloses the frames are convergent (fig 11d annotated above).
Regarding claim 19, the modified footwear Kilgore-Asciolla discloses the frames converge toward one another in a direction from a heel region of the sole structure to a forefoot region of the sole structure (fig 11d annotated above).
Regarding claim 20, the modified footwear Kilgore-Asciolla discloses an article of footwear incorporating the sole structure of Claim 11 (fig 1).
Claim(s) 6 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kilgore et al. (5,343,639) and Asciolla (2002/0178620) as applied to claims 1 and 11 above, and further in view of Aveni et al. (2010/0107444).
Regarding claims 6 and 16, the modified sole Kilgore-Asciolla teaches all limitations of the claim except the cushioning element is a fluid-filled chamber. Aveni teach a cushioning element is a fluid-filled chamber (para 0006).
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 sole of Kilgore by having fluid-filled chamber, as taught by Aveni, in order to provide better cushioning for the sole.
Examiner Note
Claims 5 and 15 do not have any art rejection due to the 35 USC § 112a and 112b. However, the claims may or may not have art rejection after the 112 rejection is resolved.
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 1-4, 6, 10-13, 16, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,285,072. 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 chassis, an outsole, a removable cushioning element, a carriage comprising a pair of frames.
Claims 1-4, 6, 10-13, 16, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,737,514. 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 chassis, an outsole, a removable cushioning element, a carriage comprising a pair of frames.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KHOA D. 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
BAO-THIEU L. NGUYEN
Primary Examiner
Art Unit 3732
/BAO-THIEU L NGUYEN/Primary Examiner, Art Unit 3732