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 .
Status of the Claims
As directed by the amendment received on August 5, 2026, claims 1-4, 6, 10, and 12-13 have been amended, and claims 7-9, 11, and 14-20 have been canceled. Claims 21-29 are new. Accordingly, claims 1-6, 10, 12-13 and 21-29 are currently pending in this application.
Response to Amendment
The amendments filed with the written response received on August 5, 2026, have been considered and an action on the merits follows. Any objections and rejections previously put forth in the Office Action dated May 7, 2026, are hereby withdrawn unless specifically noted below.
Claim Rejections - 35 USC § 112(b)
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 4-5 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 4 recites the limitation “the concave portion of the medial side corresponding to an arch of a user of the article of footwear”. As the limitation relates the concave portion to an arch of a hypothetical user of the article of footwear which can vary from user to user, it is unclear what sort of positional or shaped correspondence is intended by the limitation. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. It is suggested that the limitation instead read “the concave portion of the medial side configured to correspond to an arch of a user of the article of footwear”. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art. See 101 rejection below for additional discussion.
Claim 5 is also rejected for being dependent on a rejected claim.
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.
Claims 4-5, as best can be understood, 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 the limitation “the concave portion of the medial side corresponding to an arch of a user of the article of footwear” at lines 3-4. In order to overcome this rejection, it is suggested that the limitation instead read “the concave portion of the medial side configured to correspond to an arch of a user of the article of footwear”. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art.
Claim 5 is also rejected for being dependent on a rejected claim.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-6, 10, 12-13, and 26-28 (claims 4-5 as best can be understood) are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0299964 to Jones et al. (hereinafter, “Jones”) in view of USPN 6,754,985 to Lin et al. (hereinafter, “Lin”).
Regarding claim 1, Jones teaches an article of footwear comprising: a lateral side and a medial side opposite the lateral side; an upper; a sole structure coupled to the upper (See Jones, Fig. 6; shoe having lateral and medial sides, an upper and a sole structure), wherein the sole structure comprises: a midsole including a radial outer surface; a band removably disposed on the midsole (See Jones, Fig. 6; full length band (22) removably disposed on radial outer surface of midsole; [0063]).
That said, Jones further appears to teach wherein the midsole includes a groove extending circumferentially around the radial outer surface, the groove including a first surface defining a continuous support surface of the midsole and the band being disposed within the groove (See Jones, Fig. 6; band (22) is disposed in correspondingly shaped groove in midsole extending around entirety of midsole; [0013]).
However, it would have at least been obvious for one of ordinary skill in the art at the time of the effective filing date of the invention to dispose the band in a correspondingly shaped groove within the midsole as disclosed by Jones in order to facilitate storage of the band and hold the band in place (See Jones, [0009]-[0010]).
That said, Jones is silent to a first pin head disposed within the groove and extending away from the groove on the lateral side; and a second pin head disposed within the groove and extending away from the groove on the medial side; and the band including a first opening configured to receive the first pin head, and a second opening configured to receive the second pin head, wherein the first pin head extends through the first opening and the second pin head extends through the second opening and outward from an outer surface of the band.
However, Lin, in a related banded sole art, is directed to a shoe having a sole with an inserted strip or band fit into a recess (See Lin, Figs. 1-3; abstract). More specifically, Lin teaches a first pin head disposed within the groove and extending away from the groove on the lateral side; and a second pin head disposed within the groove and extending away from the groove on the medial side (See Lin, Figs. 1-3; each of medial and lateral sides include multiple pins (6) disposed in groove recess (3) in midsole); and the band including a first opening configured to receive the first pin head, and a second opening configured to receive the second pin head, wherein the first pin head extends through the first opening and the second pin head extends through the second opening and outward from an outer surface of the band (See Lin, Figs. 1-3; groove recess (3) and band (5) each include corresponding holes (4) for pins (6) on lateral and medial sides, said pins (6) extending through and outward from band (5) when attached).
It would have been obvious for one of ordinary skill in the art at the time of the effective filing date of the invention to secure the band of Jones as discussed above with the multiple pins and holes through the band and groove as disclosed by Lin for a variety of reasons including for example, but not limited to, securing the band to the sole structure to prevent the band from falling off while retaining removability as desired and/or for providing additional decorative options for a wearer to customize (See Lin, abstract).
Regarding claim 3, the modified article of footwear of Jones (i.e., Jones in view of Lin, as discussed with respect to claim 1 above) further teaches wherein the sole structure further includes: a third pin head adjacent to the first pin head on the lateral side; and a fourth pin head adjacent to the second pin head on the medial side, wherein the band further includes a third opening and a fourth opening, the third pin head extending through the third opening and the fourth pin head extending through the fourth opening, and wherein the third pin head is disposed posterior to the first pin head (the modified article of footwear of Jones as discussed above includes multiple pins and holes on lateral and medial sides of the midsole which would include third and fourth pins and openings positioned posterior of the first and second pins and openings as claimed).
Regarding claim 4, the modified article of footwear of Jones (i.e., Jones in view of Lin, as discussed with respect to claim 1 above) further teaches wherein the first pin head is disposed in a concave portion of the lateral side, and the second pin head is disposed in a concave portion of the medial side, the concave portion of the medial side corresponding to an arch of a user of the article of footwear (See Jones, Fig. 6; first and second ones of pins of the modified article of footwear of Jones as discussed above are disposed in groove which forms concave portions on respective lateral and medial sides of the sole which are capable of corresponding to an arch of a hypothetical user; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)).
Regarding claim 5, the modified article of footwear of Jones (i.e., Jones in view of Lin, as discussed with respect to claims 1 and 4 above) further teaches wherein the concave portion of the lateral side is disposed in a midfoot of the article of footwear, and wherein the concave portion of the medial side is disposed in the midfoot of the article of footwear (See Jones, Fig. 6; concave portions formed by groove in the modified article of footwear of Jones as discussed above extend around entire sole including a midfoot on each of the medial and lateral sides of the sole).
Regarding claim 6, the modified article of footwear of Jones (i.e., Jones in view of Lin, as discussed with respect to claim 1 above) further teaches wherein, in a relaxed configuration of the band, the band includes a bias to a shape corresponding to a shape of the groove (See Jones, Fig. 6; band (22) is elastic and shaped to correspond to a shape of the groove formed thereon; [0013], [0063]).
Regarding claim 26, the modified article of footwear of Jones (i.e., Jones in view of Lin, as discussed with respect to claim 1 above) further teaches wherein the first opening is disposed in a concavity of the band (See Jones, Fig. 6; band (22) is a loop extending around entirety of sole; openings formed in the band in the modified article of footwear of Jones as discussed above are disposed through band including inner concavity of loop band).
Regarding claim 10, Jones teaches an article of footwear comprising: an upper; and a sole structure coupled to the upper (See Jones, Fig. 6; shoe having lateral and medial sides, an upper and a sole structure), wherein the sole structure comprises: a midsole including a radial outer surface (See Jones, Fig. 6; full length band (22) removably disposed on radial outer surface of midsole; [0063]).
That said, Jones further appears to teach wherein the midsole includes a groove extending circumferentially around the radial outer surface of the midsole (See Jones, Fig. 6; band (22) is disposed in correspondingly shaped groove in midsole extending around entirety of midsole; [0013]).
However, it would have at least been obvious for one of ordinary skill in the art at the time of the effective filing date of the invention to dispose the band in a correspondingly shaped groove within the midsole as disclosed by Jones in order to facilitate storage of the band and hold the band in place (See Jones, [0009]-[0010]).
That said, Jones is silent to one or more pins disposed within the groove and extending away from the groove, each of the one or more pins including a base disposed within the groove, a pin body extending from the base, and a pin head extending from the pin body away from the groove.
However, Lin, in a related banded sole art, is directed to a shoe having a sole with an inserted strip or band fit into a recess (See Lin, Figs. 1-3; abstract). More specifically, Lin teaches one or more pins disposed within the groove and extending away from the groove, each of the one or more pins including a base disposed within the groove, a pin body extending from the base, and a pin head extending from the pin body away from the groove (See Lin, Figs. 1-3; each of medial and lateral sides include multiple pins (6) disposed in groove recess (3) in midsole, each pin including an interior base, an exterior head, and a body extending therebetween; groove recess (3) and band (5) each include corresponding holes (4) for pins (6) on lateral and medial sides, said pins (6) extending through and outward from band (5) when attached).
It would have been obvious for one of ordinary skill in the art at the time of the effective filing date of the invention to secure the band of Jones as discussed above with the multiple pins and holes through the band and groove as disclosed by Lin for a variety of reasons including for example, but not limited to, securing the band to the sole structure to prevent the band from falling off while retaining removability as desired and/or for providing additional decorative options for a wearer to customize (See Lin, abstract).
Regarding claim 12, the modified article of footwear of Jones (i.e., Jones in view of Lin, as discussed with respect to claim 10 above) further teaches wherein the sole structure further includes a band removably disposed within the groove (See Jones, Fig. 6; full length band (22) removably disposed on radial outer surface of midsole; [0063]), the band including an opening, wherein the pin head of one of the one or more pins extends through the opening (See Lin, Figs. 1-3; the band as discussed in the modification above includes holes (4) for pins (6) to extend therethrough when attached).
Regarding claim 13, the modified article of footwear of Jones (i.e., Jones in view of Lin, as discussed with respect to claims 10 and 12 above) further teaches wherein the band includes a textured element, the textured element including a circumferentially-extending rib disposed on an outer surface of the band (See Jones, Fig. 6; band shape (25) includes rib on outer surface that extends circumferentially).
Regarding claim 27, the modified article of footwear of Jones (i.e., Jones in view of Lin, as discussed with respect to claim 10 above) further teaches wherein the midsole includes a first rail bounding a top portion of the groove and a second rail bounding a bottom portion of the groove (See Jones, Fig. 6; walls forming upper and lower bounds of groove in the modified article of footwear of Jones as discussed above form first and second rails).
Regarding claim 28, the modified article of footwear of Jones (i.e., Jones in view of Lin, as discussed with respect to claim 10 and 27 above) further teaches wherein at least one of the first rail and the second rail includes a flange extending outward from the groove (See Jones, Fig. 6; walls forming upper and lower bounds of groove in the modified article of footwear of Jones as discussed above form first and second rails which are flanges bounding the formed groove).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Jones in view of Lin, as applied to claim 1 above, and further in view of US 2015/0223555 to Choi (hereinafter, “Choi”).
Regarding claim 2, the modified article of footwear of Jones (i.e., Jones in view of Lin, as discussed with respect to claim 1 above) further appears to teach wherein the radial outer surface of the midsole and the band form a continuous, flush outer surface of the article of footwear when the band is disposed within the groove (See Jones, Fig. 6; band (22) is disposed in correspondingly shaped groove in midsole extending around entirety of midsole; [0013]).
That said, Choi, in a related banded sole art, is directed to a shoe sole having edge compressing bands surrounding the outer periphery of the sole (See Choi, abstract). More specifically, Choi teaches wherein the radial outer surface of the midsole and the band form a continuous, flush outer surface of the article of footwear when the band is disposed within the groove (See Choi, Figs. 14A-14B; band (150) forms continuous, flush outer surface with midsole when disposed in groove).
Therefore, it would have at least been obvious for one of ordinary skill in the art at the time of the effective filing date of the invention to shape the band of the modified article of footwear of Jones to form a flush outer surface with the midsole as disclosed by Choi for a variety of reasons including for example, but not limited to, providing a smooth aesthetic appearance to the band and the shoe overall as desired by the wearer (See Jones, [0071]; abstract).
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Jones in view of Lin, as applied to claim 1 above, and further in view of USPN 7,823,299 to Brigham (hereinafter, “Brigham”).
Regarding claim 29, the modified article of footwear of Jones (i.e., Jones in view of Lin, as discussed with respect to claim 1 above) is silent to wherein each of the first pin head and the second pin head includes a different material than the midsole.
However, Brigham, in a related banded sole art, is directed to footwear having interchangeable heel and/or forefoot bands on a sole structure (See Brigham, abstract). More specifically, Brigham teaches wherein each of the first pin head and the second pin head includes a different material than the midsole (See Brigham, Fig. 2g; elongate member (50) pin connecting band to sole can be made of metal; sole structure is made from a resilient material such as EVA or rubber; Col. 5, line 66 – Col. 6, line 7; Col. 8, lines 56-59).
It would have been obvious for one of ordinary skill in the art at the time of the effective filing date of the invention to form the pins of the modified article of footwear of Jones from a metal material different from a resilient material of the sole as disclosed by Brigham in order to form the pins from a durable material while retaining resiliency of the sole (See Brigham, Col. 8, lines 56-59).
Claims 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Jones, in view of Lin, and in view of USPN 4,439,936 to Clarke et al. (hereinafter, “Clarke”).
Regarding claim 21, Jones teaches an article of footwear comprising: an upper; and a sole structure coupled to the upper (See Jones, Fig. 6; shoe having lateral and medial sides, an upper and a sole structure), wherein the sole structure comprises: a midsole including a radial outer surface; a band removably disposed on the midsole (See Jones, Fig. 6; full length band (22) removably disposed on radial outer surface of midsole; [0063]).
That said, Jones further appears to teach wherein the midsole includes a groove extending circumferentially around the radial outer surface, a first rail bounding a top portion of the groove, and a second rail bounding a bottom portion of the groove, each of the first rail and the second rail extending continuously about a circumference of the midsole, wherein at least one of the first rail and the second rail includes a flange extending outward from the groove; and the band being disposed within the groove (See Jones, Fig. 6; band (22) is disposed in correspondingly shaped groove in midsole extending around entirety of midsole; walls forming upper and lower bounds of groove in the modified article of footwear of Jones as discussed above form first and second rails which are flanges bounding the formed groove; [0013]).
However, it would have at least been obvious for one of ordinary skill in the art at the time of the effective filing date of the invention to dispose the band in a correspondingly shaped groove bounded by rail walls within the midsole as disclosed by Jones in order to facilitate storage of the band and hold the band in place (See Jones, [0009]-[0010]).
That said, Jones is silent to a pin disposed within the groove, the pin including a pin head extending away from the groove; and the band including an opening, wherein the pin head extends through the opening and outward from an outer surface of the band.
However, Lin, in a related banded sole art, is directed to a shoe having a sole with an inserted strip or band fit into a recess (See Lin, Figs. 1-3; abstract). More specifically, Lin teaches a pin disposed within the groove, the pin including a pin head extending away from the groove (See Lin, Figs. 1-3; each of medial and lateral sides include multiple pins (6) disposed in and extending away from groove recess (3) in midsole); and the band including an opening, wherein the pin head extends through the opening and outward from an outer surface of the band (See Lin, Figs. 1-3; groove recess (3) and band (5) each include corresponding holes (4) for pins (6) on lateral and medial sides, said pins (6) extending through and outward from band (5) when attached).
It would have been obvious for one of ordinary skill in the art at the time of the effective filing date of the invention to secure the band of Jones as discussed above with the multiple pins and holes through the band and groove as disclosed by Lin for a variety of reasons including for example, but not limited to, securing the band to the sole structure to prevent the band from falling off while retaining removability as desired and/or for providing additional decorative options for a wearer to customize (See Lin, abstract).
That said, the modified article of footwear of Jones (i.e., Jones in view of Lin, as discussed above) is silent to wherein at least one of the first rail and the second rail is configured to deform to permit removal of the band from the groove.
However, Clarke, in a related footwear art, is directed to a shoe having shock attenuating areas (See Clarke, Fig. 1; abstract). More specifically, Clarke teaches wherein at least one of the first rail and the second rail is configured to deform to permit removal of the band from the groove (See Clarke, Fig. 1; sole is formed of flexible and resilient materials that are capable of deforming; Col. 4, lines 27-46).
It would have been obvious for one of ordinary skill in the art at the time of the effective filing date of the invention to form the sole of the modified article of footwear of Jones from the resilient and flexible materials disclosed by Clarke in order to provide cushioning to absorb the shocks of running thereby improving wearer comfort (See Clarke, Col. 4, lines 27-46).
Regarding claim 22, the modified article of footwear of Jones (i.e., Jones in view of Lin and Clarke, as discussed with respect to claim 21 above) further teaches wherein the flange extends circumferentially around the midsole (See Jones, Fig. 6; flange formed by either of the upper or lower walls defining the groove in the modified article of footwear of Jones as discussed above extends circumferentially around the entire midsole).
Regarding claim 23, the modified article of footwear of Jones (i.e., Jones in view of Lin and Clarke, as discussed with respect to claim 21 above) further teaches wherein the pin further includes a base disposed within the groove and a pin body extending from the base, the pin head extending from the pin body (See Lin, Figs. 1-3; each pin (6) includes an interior base, an exterior head, and a body extending therebetween).
Regarding claim 24, the modified article of footwear of Jones (i.e., Jones in view of Lin and Clarke, as discussed with respect to claim 21 above) further teaches wherein the band is a fully circumferentially-enclosed band (See Jones, Fig. 6; full length band (22) is a loop extending around entire circumference of shoe).
Regarding claim 25, the modified article of footwear of Jones (i.e., Jones in view of Lin and Clarke, as discussed with respect to claim 21 above) further teaches wherein, in a relaxed configuration of the band, a first edge of the band includes a curvature corresponding to a curvature of the first rail and a second edge of the band includes a curvature corresponding to a curvature of the second rail (See Jones, Fig. 6; band (22) is elastic and shaped to correspond to a shape of the groove formed between walls of recess; [0013], [0063]).
Response to Arguments
As an initial matter, Examiner respectfully disagrees with Applicant’s statement that the features and language recited by Applicant in the remarks were agreed upon during the previous interview. As stated in the Examiner interview summary dated August 5, 2026, visual distinctions were noted and discussed during the interview, and no allowable subject matter was agreed upon during the interview.
In view of Applicant’s amendment, the search has been updated, and new prior art has been identified and applied. Applicant’s arguments, filed August 5, 2026, with respect to the rejection of the claims under 35 USC 102 and 103 have been fully considered but are moot in view of the new grounds of rejection, as Applicant’s arguments appear to be drawn only to the newly amended limitations and previously presented rejections.
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 MATTHEW R MARCHEWKA whose telephone number is (571) 272-4038. The examiner can normally be reached M-F: 9:00AM-5:00PM EST.
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, CLINTON T OSTRUP can be reached at (571) 272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW R MARCHEWKA/Examiner, Art Unit 3732
