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 .
Election/Restrictions
Applicant’s election without traverse of Species A: Figs. 1-8 in the reply filed on 10/27/2025 is acknowledged.
Claims 1-8 and 13 are identified in the reply as reading on the elected species.
Claims 1-13 are presented.
Claims 9-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/27/2025.
The present office action treats claims 1-8 and 13 on the merits.
The present office action is a non-final rejection.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim 4-5 and 6-8 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Claim 4 recites “wherein the bottom portion extends from a position of a midfoot portion to a position of a forefoot portion of a foot of a wearer in the sole structure”, which is directed to or encompassing a human organism. This 35 USC 101 rejection could be overcome by amending the claim to recite the human organism functionally—for example by reciting --wherein the bottom portion is configured to extend from a position of a midfoot portion to a position of a forefoot portion of a foot of a wearer in the sole structure--.
Claim 5 is rejected if only because it depends from a rejected claim.
Claim 6 recites “the first midsole portion is located at part of the sole structure that corresponds to a position of at least a forefoot portion of a foot of a wearer, and the second midsole portion is located at part of the sole structure that corresponds to a position of at least a rear foot portion of the foot of the wearer”, which is directed to or encompassing a human organism. This 35 USC 101 rejection could be overcome by amending the claim to recite the human organism functionally—for example by reciting --the first midsole portion is located at part of the sole structure that is configured to correspond to a position of at least a forefoot portion of a foot of a wearer, and the second midsole portion is located at part of the sole structure that is configured to correspond to a position of at least a rear foot portion of the foot of the wearer--.
Claim 7 is rejected if only because it depends from a rejected claim. In addition, claim 7 further recites “wherein the overlap portion is located at part of the sole structure that ranges from a position of a midfoot portion to a position of a front portion of the rear foot portion of the foot of the wearer”, which is directed to or encompassing a human organism. This 35 USC 101 rejection could be overcome by amending the claim to recite the human organism functionally—for example by reciting -- wherein the overlap portion is located at part of the sole structure that is configured to range from a position of a midfoot portion to a position of a front portion of the rear foot portion of the foot of the wearer--.
Claim 8 is rejected if only because it depends from a rejected claim. In addition, claim 8 further recites “wherein the first boundary portion extends from a lower side to an upper side of the sole structure while extending from the position of the midfoot portion to the position of the front portion of the rear foot portion of the foot of the wearer in the sole structure”, which is directed to or encompassing a human organism. This 35 USC 101 rejection could be overcome by amending the claim to recite the human organism functionally—for example by reciting -- wherein the first boundary portion is configured to extend from a lower side to an upper side of the sole structure while extending from the position of the midfoot portion to the position of the front portion of the rear foot portion of the foot of the wearer in the sole structure--.
Claim Rejections - 35 USC § 103
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 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Byrne, US 2013/0081305] in view of [Vattes, US 2012/0137540].
Regarding claim 1:
Byrne discloses (Figs. 5-6):
A sole structure 350 comprising:
a first midsole portion 372 made of a first material (“polyurethane...hardness of 35-40...Asker C”; para 44);
a second midsole portion 374 which is made of a second material (“polyurethane having a hardness of 45-50 on the Asker C scale”; para 44) that is the same as or different from the first material (the present disclosure states at para [0058] as filed that “the second material is a material different from the first material. For example, the second material is a material having higher impact absorbing properties than the first material and having lower rebound properties than the first material”, and accordingly the material of 374 is different from the material of 372 due to the different harness properties of each), and at least part of which is stacked above (Figs. 5-6) or below the first midsole portion; and
an exterior portion 360 made of a third material (a material of 360),
wherein a boundary portion of an overlap portion in which the first midsole portion and the second midsole portion overlap with each other in a top-bottom direction includes a first boundary portion defined by a line and located on each of a medial side and lateral side in sideview and extending in a foot length direction (“bevel transition...scarf joint”; para 15; “scarf joint...extends across the width”; para 46; Figs. 5-6), and
the exterior portion 360 covers the first boundary portion from outside of the first midsole portion and the second midsole portion (Figs. 5-6 and in the same general manner that exterior portion 60 of Figs. 1A-1C covers midsole 70 from outside of midsole 70 in the embodiment shown in Figs. 1A-1C).
Byrne Figs. 5-6 does not expressly disclose the exterior portion 360 made of a third material having higher rigidity than the first material and the second material.
However and in further view of Byrne:
Byrne does teach and as embodied in paras 30-32 that a third material of an exterior portion 60 “is molded from thermo plastic rubber, latex rubber, or other materials such as EVA (ethyl vinyl acetate), polyurethane, nitro polyvinyl chloride, or other materials known in the art. In general, it is desired that the outsole have a hardness between 50 and 55 on the Shore A hardness scale” in comparison to a midsole portion 70 having “a relatively low hardness, preferably in the range of 35 to 55 on the Asker C Hardness scale...The lower hardness is preferred for the midsole 70 so that the midsole will feel comfortable underfoot and will also absorb the shock of heel strike and other impacts associated with walking” such that Byrne at least teaches an exterior portion material having a higher hardness than a midsole portion material insofar as a material of 50-55 Shore A durometer is harder than a material of 35-55 Asker C hardness as evidenced by extrinsic reference [Linkfield, US 2020/0275739], which states a material having “about 65 to about 80 Asker C” hardness is an example of a material having a hardness “in the range of about 40 to about 60 Shore A” (para 29 of Linkfield) and consistent with Byrne’s use of the term “relatively low hardness” in reference to the material of midsole portion 70 of Byrne (para 32 of Byrne).
Thus although Byrne teaches an exterior portion material is harder than a midsole portion material, Byrne is silent as to relative rigidity.
However, Vattes teaches a sole structure (Title, Abstract) wherein an exterior portion 12 (i.e. “chassis 12”; para 33) comprises a material that is more rigid than a material of a midsole portion 16 (i.e. “heel pad 16”; para 33): the “chassis, combined with heel pad and forefoot pad, form the present composite sole assembly...heel pad fits into an opening in the chassis and mates with the interior front wall of such opening...when a person's foot steps-down onto the sole assembly of the present invention, the...heel pad[]...constructed of a low density material provide cushioning and shock absorption to the wearer's foot and the chassis which is constructed of a more rigid material supports the wearer's foot” (para 12).
It 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 to have modified the sole structure of Byrne such that its third material has higher rigidity than the first material and the second material in order to provide cushioning and shock absorption via the first and second materials of the midsole portions and to provide foot support via the third material of the exterior portion, as suggested by Vattes (para 12).
Regarding claim 2:
Byrne in view of Vattes teach The sole structure of claim 1, as set forth above.
Byrne further discloses wherein the exterior portion includes a pair of side wall portions (see annotated Fig. 5 – a below) located on the medial side and lateral side, and each of the pair of side wall portions covers the first boundary portion in a lateral direction of the first midsole portion and the second midsole portion (Figs. 5-6 and in the same general manner that exterior portion 60 of Figs. 1A-1C covers midsole 70 from outside of midsole 70 in the embodiment shown in Figs. 1A-1C wherein side wall portions thereof are located on medial and lateral sides and covering in a lateral direction).
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Regarding claim 3:
Byrne in view of Vattes teach The sole structure of claim 2, as set forth above.
Byrne further discloses wherein the boundary portion of the overlap portion further includes a second boundary portion defined by a line and located at a bottom of the first midsole portion and a bottom of the second midsole portion in bottom view (Figs. 5-6), the exterior portion includes a bottom portion located below the first midsole portion and the second midsole portion (Figs. 5-6), and the bottom portion covers the second boundary portion from under the first midsole portion and the second midsole portion (Figs. 5-6 and in the same general manner that a bottom portion of exterior portion 60 of Figs. 1A-1C covers midsole 70 from under midsole 70 in the embodiment shown in Figs. 1A-1C).
Regarding claim 4:
Byrne in view of Vattes teach The sole structure of claim 3, as set forth above.
Byrne further discloses wherein the bottom portion extends from a position of a midfoot portion to a position of a forefoot portion of a foot of a wearer in the sole structure (as in Figs. 5-6 wherein the bottom portion of 360 extends under and from “forefoot” section and to “heel” section (para 45) such that it also extends from a position of a midfoot portion to a position of a forefoot portion of a foot of a wearer.
Regarding claim 13:
Byrne in view of Vattes teach The sole structure of claim 1, as set forth above.
Byrne further discloses A shoe (“shoe”; para 44) comprising: the sole structure 350 of claim 1 (refer to above treatment of claim 1).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Byrne, US 2013/0081305] and [Vattes, US 2012/0137540] as applied to claim 4 above, and further in view of [Becker, US 2008/0216355].
Regarding claim 5:
Byrne in view of Vattes teaches The sole structure of claim 4, as set forth above.
Byrne does not expressly disclose wherein the bottom portion includes an upper surface on which a first reinforcement portion made of a fourth material having higher rigidity than the third material is provided.
However, Becker teaches a sole structure wherein a bottom portion of an exterior portion 200 includes an upper surface on which a first reinforcement portion 250 made of a fourth material (“made of a substantially rigid...material”; para 61) having a higher rigidity than a third material of the exterior portion 200 (“more rigid than the outer member” (para 7)) further wherein a midsole portion 920 is provided above the combined exterior portion 200 and reinforcement portion 250 (Figs. 11-12; paras 81-82).
Becker teaches the first reinforcement portion comprises “puncture resistant material” (para 6) which is “resistant to puncturing” (para 61) and is “protective” (para 61) and for “protecting a wearer's foot from injury due to sharp objects” (para 70).
It 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 to have modified the modified Byrne such that the upper surface of its bottom portion is provided with a first reinforcement portion made of a fourth material having higher rigidity than the third material thereon in order to protect from puncture and/or injury due to sharp objects, as taught by Becker (paras 6, 61, and 70).
In adopting the modification, one would arrive at wherein the bottom portion includes an upper surface on which a first reinforcement portion made of a fourth material having higher rigidity than the third material is provided as claimed insofar as the first reinforcement portion would be arranged such that the bottom portion includes an upper surface on which a first reinforcement portion made of a fourth material having higher rigidity than the third material is provided.
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Byrne, US 2013/0081305] and [Vattes, US 2012/0137540] as applied to claim 4 above, and further in view of [Holden, US 2006/0156581] and [Giese, US 4,316,335].
Regarding claim 6:
Byrne in view of Vattes teaches The sole structure of claim 1, as set forth above.
Byrne further discloses the first midsole portion is located at part of the sole structure that corresponds to a position of at least a forefoot portion of a foot of a wearer, and the second midsole portion is located at part of the sole structure that corresponds to a position of at least a rear foot portion of the foot of the wearer (Figs. 5-6; para 45).
Byrne does not expressly disclose wherein the first material is a material having higher rebound properties than the second material, the second material is a material having higher impact absorbing properties than the first material and having lower rebound properties than the first material.
However, Holden teaches a first midsole portion 144 that is located at a part of a sole structure configured to correspond to a position of a forefoot portion of a foot of a wearer and a second midsole portion 134 that is located at a part of the sole structure configured to correspond to a rear foot portion of the foot of the wearer.
Holden further teaches the rebound properties of each are within the range of “not greater than about 35 per cent” (“elastomeric pad may be disposed in the resilient mid-sole of the footwear below the ball of the wearer's foot, and as in the heel portion of the shoe, this pad may comprise” material having “Shore resiliometer rebound percentage of not greater than about 35 per cent”; para 20.
Holden further teaches that footwear components having a “spring characteristic”, a “portion of the kinetic energy applied” thereto is “temporarily stored in the mechanism in the form of potential, or “spring” energy” (para 44) further wherein a material “when deformed, will quickly rebound, or return to its original, un-deflected configuration”; para 47.
Because Holden is concerned with desired kinetic energy return of materials of forefoot and rear foot portions via spring rebound and provides a range (i.e. each being “not greater than about 35 per cent”) encompassing the claimed limitation, the claimed range is considered as a result-effective variable such that one of ordinary skill could have arrived at the claimed relative rebound properties via routine experimentation in order to provide desired sole structure properties. The claimed relative rebound properties is merely an optimum or workable relative rebound properties and the relative rebound properties of the first and second materials are expected to affect kinetic energy rebound in forefoot and rearfoot regions of the sole structure.
Therefore, it 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 to have modified the modified Byrne such that its first material is a material having higher rebound properties than the second material and its second material is a material having lower rebound properties than the first material in order to promote a greater springlike effect in the forefoot portion of the sole assembly than in the rearfoot portion of the sole assembly during a wearer’s gait cycle for a wearer who prefers such a springlike effect.
Regarding the second material is a material having higher impact absorbing properties than the first material:
Giese teaches a sole structure (Abstract) wherein a first midsole portion is located at part of the sole structure that corresponds to a position of at least a forefoot portion of a foot of a wearer, and a second midsole portion is located at part of the sole structure that corresponds to a position of at least a rear foot portion of the foot of the wearer further wherein a second material of a second midsole portion is having higher impact absorbing properties than a first material of a first midsole portion: “mid-sole forming part of the sole portion extends over the heel, arch and forefoot areas of the sole portion and is made up of different materials having different shock absorbing properties such that the area of the mid-sole overlying the heel area comprises a...shock absorbing portion and the area of the mid-sole overlying the forefoot area comprises a...shock absorbing portion” having “lesser shock absorbing properties than the first portion”; col. 2 line 66 – col. 3 line 7.
Giese further teaches that “Because, particularly in the case of running shoes, the time that the heel contacts the ground is less than that when the forefoot contacts the ground, the intensity of the shock recorded by the heel is greater than that recorded by the forefoot” (col. 1 lines 28-32).
It 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 to have modified the modified Byrne such that the second material is a material having higher impact absorbing properties than the first material in order to permit the sole structure to absorb the relatively higher shock imparted into the rearfoot region than the forefoot region of the sole structure while a wearer is running, as suggested by Giese (col. 1 lines 28-32).
Regarding claim 7:
Byrne in view of Vattes, Holden, and Giese teach The sole structure of claim 6, as set forth above.
Byrne further discloses wherein the overlap portion is located at part of the sole structure that ranges from a position of a midfoot portion to a position of a front portion of the rear foot portion of the foot of the wearer (Figs. 5-6; “bevel transition” is provided “between forefoot section and...heel section” (para 15) so as to range from a position of a midfoot to a position of a front portion of the rear foot portion of the foot of the wearer as claimed; it is noted the sole structure will fit wearers of different foot sizes and foot shapes differently such that the limitation is met).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Byrne, US 2013/0081305] and [Vattes, US 2012/0137540], [Holden, US 2006/0156581] and [Giese, US 4,316,335] as applied to claim 7 above, and further in view of [Lee, US 2009/0113767].
Regarding claim 8:
Byrne in view of Vattes, Holden, and Giese teach The sole structure of claim 6, as set forth above.
Byrne does not expressly disclose wherein the first boundary portion extends from a lower side to an upper side of the sole structure while extending from the position of the midfoot portion to the position of the front portion of the rear foot portion of the foot of the wearer in the sole structure.
Rather, in Byrne, the first boundary portion is configured to extend from a lower side to an upper side of the sole structure while extending from the position of the front portion of the rear foot portion to the position of the midfoot portion of the foot of the wearer in the sole structure.
However, Lee teaches a sole structure (Abstract, title) wherein a first boundary portion of an overlap portion in which a first midsole portion 100 and a second midsole portion 300 overlap with each other in a top-bottom direction is configured to extend from a lower side to an upper side of the sole structure while extending from a position of a midfoot portion to a position of the front portion of the rear foot portion of the foot of the wearer in the sole structure (Figs. 1-4). Lee, in an alternative, (Fig. 8a; para 45) shows also an embodiment wherein a boundary portion is configured to extend from a lower side to an upper side while extending from the position of the front portion of the rear foot portion to the position of the midfoot portion of the foot of the wearer in the sole structure as in Byrne. Accordingly, Lee teaches a boundary portion can be provided such that it is configured to extend either as in Byrne or as claimed.
It 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 to have modified the modified Byrne such that the first boundary portion extends from a lower side to an upper side of the sole structure while extending from the position of the midfoot portion to the position of the front portion of the rear foot portion of the foot of the wearer in the sole structure in order to yield the predictable result of providing the smooth transition in properties described by Byrne in para 15 of Byrne; one of ordinary skill would expect such a smooth transition to be achieved via either providing first boundary portion is configured to extend from a lower side to an upper side of the sole structure while extending from the position of the front portion of the rear foot portion to the position of the midfoot portion of the foot of the wearer in the sole structure as in Byrne and as in Lee Fig. 8a, or, in the alternative, wherein the first boundary portion extends from a lower side to an upper side of the sole structure while extending from the position of the midfoot portion to the position of the front portion of the rear foot portion of the foot of the wearer in the sole structure as in Lee Figs. 1-4 based on the teachings of Lee.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRADY A NUNNERY whose telephone number is (571)272-2995. The examiner can normally be reached 8-5 M-F.
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/GRADY ALEXANDER NUNNERY/ Examiner, Art Unit 3732