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 of Invention I, Species B, Species F, and Species H in the reply filed on April 6, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
In the reply, Applicant indicated claims 1-13 as reading upon the elected invention. That said, claims 7 and 9 are further withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Examiner notes that the limitations of claim 7 appear to only be disclosed with respect to the non-elected vertically arranged pin species, as no discussion of such limitations with respect to the elected species B can be found in Applicant’s disclosure as originally filed. Claim 9 is similarly withdrawn for being dependent on claim 7.
Accordingly, claims 1-20 are currently pending in this application with claims 7, 9, and 14-20 being withdrawn from further consideration. An action on the merits follows.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following feature(s) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
“wherein the one or more pins extend through the midsole from a lateral side of the article of footwear to a medial side of the article of footwear” as recited in claim 11
The drawings are further objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 1300a, 1300b, 1302a, 1302b as recited at [0057]. It is suggested that these reference characters be added to Fig. 13.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
A series of singular dependent claims is permissible in which a dependent claim refers to a preceding claim which, in turn, refers to another preceding claim. A claim which depends from a dependent claim should not be separated by any claim which does not also depend from said dependent claim. It should be kept in mind that a dependent claim may refer to any preceding independent claim. In general, applicant's sequence will not be changed. See MPEP § 608.01(n). That said, claim 8 is objected to because the claim is separated from a dependent claim by a claim which does not also depend from said dependent claim.
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.
Claim 2 is 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 2 recites the limitation “wherein the radial outer surface of the midsole and band form a continuous, flush outer surface of the article of footwear” at lines 1-2. As the band was previously recited as being “removably disposed within the groove”, it is unclear at what position of the band (i.e., removed or present in the groove) the continuous, flush outer surface is achieved. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. Based on Applicant’s disclosure, it is suggested that the limitation instead read “wherein the radial outer surface of the midsole and band form a continuous, flush outer surface of the article of footwear when the band is disposed within the groove”. 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 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 1-6, 8, 10, and 12-13 (claim 2, as best can be understood) are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2015/0223555 to Choi (hereinafter, “Choi”).
Regarding claim 1, Choi 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 Choi, Figs. 2, 14A-14B; shoe (100) having medial and lateral sides, upper (120), and sole structure (110) coupled to the upper; abstract), wherein the sole structure comprises: a midsole including a radial outer surface, wherein the midsole includes a groove extending circumferentially around the radial outer surface (See Choi, Figs. 2, 14A-14B; sole (110) is a midsole that includes a radial outer surface having groove or recessed channel formed about front vent opening (116) by protruding portions (114) as depicted in Figs. 14A-14B); 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 Choi, Figs. 2, 14A-14B; frontmost of fasteners (118) on each of medial and lateral sides; fasteners (118) each being positioned within groove/channel associated with front band (150); fasteners (118) having the protruding embodiment depicted in Fig. 4B, i.e., a pin having a pinhead); and a band removably disposed within the groove (See Choi, Figs. 2, 14A-14B; front band (150) removably disposable within front groove/channel as depicted in Figs. 14A-14B), the band including a first opening configured to receive the first pin head, and a second opening configured to receive the second pin head (See Choi, Fig. 4B; each end of band (150) includes an opening configured to receive a corresponding protruding fastener (118) as depicted in Fig. 4B).
Regarding claim 2, Choi (as discussed with respect to claim 1 above) further teaches wherein the radial outer surface of the midsole and the band form a continuous, flush outer surface of the article of footwear (See Choi, Fig. 14B; band (150) and outer surface of sole (110) form continuous, flush outer surface).
Regarding claim 3, Choi (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 (See Choi, Figs. 2, 14A-14B; rearmost of fasteners (118) on each of medial and lateral sides adjacent to frontmost fasteners; fasteners (118) having the protruding embodiment depicted in Fig. 4B, i.e., a pin having a pinhead; Examiner notes that the term "adjacent" is very broad and merely means "close to; lying near". (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)).
Regarding claim 4, Choi (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 (See Choi, Figs. 2, 14A-14B; fasteners (118) are disposed in groove/channel depicted in Figs. 14A-14B which forms concave portions on each of the medial and lateral sides of sole (110); 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, Choi (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 Choi, Figs. 2, 14A-14B; concave portions formed by groove/channel depicted in Figs. 14A-14B extend to midfoot of shoe (100) on each of the medial and lateral sides of sole (110)).
Regarding claim 6, Choi (as discussed with respect to claim 1 above) further teaches wherein the band includes a bias to a shape corresponding to a shape of the groove (See Choi, Figs. 2, 14A-14B; band (150) is elastic and shaped to compress against outer peripheral edge of sole (110) and correspond to a shape of the groove/channel formed thereon; [0062], [0085]).
Regarding claim 8, Choi (as discussed with respect to claims 1 and 3 above) further teaches wherein the third pin head is disposed posterior to the first pin head.
Regarding claim 10, Choi teaches an article of footwear comprising: an upper; and a sole structure coupled to the upper (See Choi, Figs. 2, 14A-14B; shoe (100) having upper (120) coupled to sole structure (110); abstract), wherein the sole structure comprises: a midsole including a radial outer surface, wherein the midsole includes a groove extending circumferentially around the radial outer surface of the midsole (See Choi, Figs. 2, 14A-14B; sole (110) is a midsole that includes a radial outer surface having groove or recessed channel formed about front vent opening (116) by protruding portions (114) as depicted in Figs. 14A-14B); and one or more pins disposed within the groove and extending away from the groove (See Choi, Figs. 2, 14A-14B; frontmost of fasteners (118) on each of medial and lateral sides; fasteners (118) each being positioned within groove/channel associated with front band (150); fasteners (118) having the protruding embodiment depicted in Fig. 4B, i.e., a pin having a pinhead).
Regarding claim 12, Choi (as discussed with respect to claim 10 above) further teaches wherein the sole structure further includes a band removably disposed within the groove (See Choi, Figs. 2, 14A-14B; front band (150) removably disposable within front groove/channel as depicted in Figs. 14A-14B).
Regarding claim 13, Choi (as discussed with respect to claims 10 and 12 above) further teaches wherein the band includes a textured element (See Choi, Figs. 2, 14A-14B; band (150) is formed of a material having some texture such as at least a smooth texture).
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.
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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Choi as applied to claim 10 above, and further in view of USPN 7,823,299 to Brigham (hereinafter, Brigham).
Regarding claim 11, Choi (as discussed with respect to claim 10 above) further teaches wherein the one or more pins extend through the midsole from a lateral side of the article of footwear to a medial side of the article of footwear.
However, Brigham, in a related sole structure having an adjustable band art, is directed footwear having interchangeable heel and/or forefoot bands on the sole structure (See Brigham, Fig 1J; abstract). More specifically, Brigham teaches wherein the one or more pins extend through the midsole from a lateral side of the article of footwear to a medial side of the article of footwear (See Brigham, Fig. 1J; central member (20) extends through midsole (8) from lateral to medial sides to connect to each end of band); Col. 7, lines 18-35).
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 replace the fastener connection for the band of Choi for the fastener and central member connection for a sole band as disclosed by Brigham for a variety of reasons including for example, but not limited to, reducing a number of parts required for manufacture by using a single, central connection member for both sides of the footwear and/or allowing for rotation of the connected band on the central connection member thereby allowing the band to be adjustable on the sole without complete disconnection and removal of the band (See Brigham, Col. 7, lines 18-35). Additionally or alternatively, the modification amounts to no more than a simple substitution of one known connection member for another with nothing more than the reasonable expectation of one known connection member performing just as well as the other to yield predictable results, i.e., connection of a removable band to a sole structure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure. US 2010/0299964 to Jones et al.; US 2015/0257474 to Campbell; US D926,451 to Stevens; USPN 4,218,797 to Sbicca; US D408,617 to Balbinot et al. are each directed to articles of footwear having sole bands and/or sole bands for articles of footwear.
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
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