DETAILED ACTION
Claims 1-3, 5-8, 10-14, and 21-28 are pending. Claims 1 and 10 are amended. Claims 4, 9, and 15-20 are cancelled.
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
This office action is responsive to the amendment filed on June 9, 2026. As directed by the amendment: claims 1 and 10 have been amended, claims 4, 9, and 15-20 have been cancelled, and claims 21-28 have been added. Thus, claims 1-3, 5-8, 10-14, and 21-28 are presently pending in this application.
Applicant’s amendment to the claims have not overcome the 35 USC §102(a)(1) rejections.
Response to Arguments
Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s argument hinges on the location of a midfoot region. The Examiner has updated the annotated Figures for Lucas and Fusco to depict the location of the midfoot with respect to the forefoot.
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 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.
Claim(s) 1, 2, 4-7, and 10-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lucas et al. (US 20030208929).
Regarding claim 1, Lucas describes a sole structure having a forefoot region, a heel region, and a midfoot region disposed between the forefoot region and the heel region (see annotated Fig. 1), the sole structure comprising:
a first cushioning member that is disposed in the forefoot region, the midfoot region, and the heel region (see annotated Fig. 1);
a second cushioning member (deformation element 110) that is unitary (is unitary) and disposed below the first cushioning member, the second cushioning member extending in the forefoot region and the midfoot region (extends from forefoot into the midfoot region, see annotated Fig. 1 below);
a sole plate (distribution plate 100) including an upper flange (see annotated Fig. 5) and a lower flange (see annotated Fig. 5) that are connected at a first point (see annotated Fig. 5) such that the upper flange is disposed above the lower flange, such that the upper flange is disposed between the first cushioning member and the second cushioning member, and such that the lower flange is disposed below the second cushioning member (see Fig. 1 depicting relative locations of the first and second cushioning members and plate); and
an outsole (outsole 200) that is disposed along a bottom of the sole structure, such that the outsole is disposed below the lower flange (see Fig. 3),
wherein the first point, at which the upper flange and the lower flange connect, is spaced from the second cushioning member, thereby forming a spacing (see annotated Fig. 3).
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Regarding claim 2, Lucas describes the sole structure of claim 1, wherein the first cushioning member comprises a thermoplastic material (EVA, para. 0041).
Regarding claim 5, Lucas describes the sole structure of claim 1, wherein the upper flange of the sole plate has a uniform thickness, wherein the lower flange of the sole plate has a uniform thickness, and wherein the uniform thickness of the upper flange is substantially the same as the uniform thickness of the lower flange (see Fig. 5, uniform thickness).
Regarding claim 6, Lucas describes the sole structure of claim 1, wherein the sole plate is visible when the sole structure is viewed from a medial side of the sole structure (is visible, plate extends to edge of the footwear).
Regarding claim 7, Lucas describes the sole structure of claim 1, wherein the sole plate is visible when the sole structure is viewed from a lateral side of the sole structure (is visible, plate extends to edge of the footwear).
Regarding claim 10, Lucas describes sole structure having a forefoot region, a heel region, and a midfoot region disposed between the forefoot region and the heel region (see annotated Fig. 1), the sole structure comprising:
a first cushioning member that is disposed in the forefoot region, the midfoot region, and the heel region (see annotated Fig. 1);
a second cushioning member (deformation element 110) that is unitary (is unitary) and disposed below the first cushioning member, the second cushioning member extending in the forefoot region and the midfoot region (extends from forefoot into the midfoot region, see annotated Fig. 1);
a sole plate (distribution plate 100) including an upper flange and a lower flange that are connected through a rear portion of the sole plate (see annotated Fig. 5), such that the upper flange is disposed above the lower flange, and the upper flange is disposed between the first cushioning member and the second cushioning member; and
an outsole (outsole 200) disposed below the first cushioning member, the second cushioning member, and the sole plate, such that the lower flange of the sole plate is disposed between the second cushioning member and the outsole (see Fig. 1 depicting relative locations of first and second cushioning member and plate),
wherein the rear portion of the sole plate is disposed rearward of a rear side of the second cushioning member (see Fig. 3), and
wherein the rear side of the second cushioning member is spaced from the rear portion of the sole plate, thereby forming a spacing (see annotated Fig. 3) (it is noted that Lucas recites that other embodiments that incorporate the concepts disclosed may be used without departing from the scope of the invention, and thus Lucas envisions being modified by embodiments not disclosed).
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Regarding claim 11, Lucas describes the sole structure of claim 10, wherein a portion of the second cushioning member is enclosed within the sole plate (see Fig. 3).
Regarding claim 12, Lucas describes the sole structure of claim 10, wherein a heel end of the sole plate extends beyond a heel end of the second cushioning member (see Fig. 3 above, extends beyond the rearward edge of the cushioning member).
Regarding claim 13, Lucas describes the sole structure of claim 10, wherein a toe end of the outsole extends beyond a toe end of the first cushioning member, a toe end of the second cushioning member, and a toe end of an upper (see annotated Fig. 3 below).
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Regarding claim 14, Lucas describes the sole structure of claim 10, wherein the rear portion of the sole plate defines a C-shaped profile (is C-shaped).
Claim(s) 1, 3, 8, 21-23, and 25-28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fusco (US 20080072462).
Regarding claim 1, Fusco describes a sole structure (support assembly) having a forefoot region, a heel region, and a midfoot region disposed between the forefoot region and the heel region (see annotated Fig. 3), the sole structure comprising:
a first cushioning member (midsole 26) that is disposed in the forefoot region, the midfoot region, and the heel region (see annotated Fig. 3);
a second cushioning member (insert 80) that is disposed below the first cushioning member (26), the second cushioning member extending in the forefoot region and the midfoot region (extends from forefoot into the midfoot region, see annotated Fig. 3);
a sole plate (tubular member 38) including an upper flange (see annotated Fig. 3) and a lower flange (see annotated Fig. 3) that are connected at a first point (see annotated Fig. 3) such that the upper flange is disposed above the lower flange, such that the upper flange is disposed between the first cushioning member and the second cushioning member, and such that the lower flange is disposed below the second cushioning member (see Fig. 3 depicting relative locations of the first and second cushioning members and plate); and
an outsole (see annotated Fig. 4) that is disposed along a bottom of the sole structure, such that the outsole is disposed below the lower flange (see Fig. 3),
wherein the first point, at which the upper flange and the lower flange connect, is spaced from the second cushioning member, thereby forming a spacing (gap is provided in front of an behind each insert, para. 0044) (it is noted that Fusco recites in para. 0046 that modification and adaptations can be made without departing from the scope of the invention and all such modifications are intended to be covered by the claims, Fusco thus envisions being modifiable in any way).
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Regarding claim 3, Fusco describes the sole structure of claim 1, wherein the outsole is not continuous along the sole structure in the midfoot region (is not continuous in the midfoot region).
Regarding claim 8, Fusco describes the sole structure of claim 1, wherein the lower flange of the sole plate is visible when the sole structure is viewed from a bottom side of the sole structure (see Fig. 4, is visible).
Regarding claim 21, Fusco describes a sole structure (support assembly) having a forefoot region, a heel region, and a midfoot region disposed between the forefoot region and the heel region (see annotated Fig. 3), the sole structure comprising:
a first cushioning member (midsole 26) that is disposed in the forefoot region, the midfoot region, and the heel region (see annotated Fig. 3);
a second cushioning member (insert 80) that is disposed below the first cushioning member (26), the second cushioning member extending in the forefoot region and the midfoot region (extends from forefoot into the midfoot region, see annotated Fig. 3);
a sole plate (tubular member 38) including an upper flange (see annotated Fig. 3) and a lower flange (see annotated Fig. 3) that are connected at a first point (see annotated Fig. 3) such that the upper flange is disposed above the lower flange, such that the upper flange is disposed between the first cushioning member and the second cushioning member, and such that the lower flange is disposed below the second cushioning member in the midfoot region and the forefoot region (see Fig. 3 depicting relative locations of the first and second cushioning members and plate); and an outsole disposed below the lower flange, wherein the outsole is not continuous along the midfoot region of the sole structure; and
an outsole disposed below the lower flange (see annotated Fig. 4),
wherein the outsole is not continuous along the midfoot region of the sole structure (is not continuous).
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Regarding claim 22, Fusco describes the sole structure of claim 21, wherein the lower flange of the sole plate is visible when the sole structure is viewed from a bottom side of the sole structure (see Fig. 4).
Regarding claim 23, Fusco describes the sole structure of claim 21, wherein a rear side of the second cushioning member is disposed within the midfoot region (see annotated Fig. 3).
Regarding claim 25, Fusco describes the sole structure of claim 21, wherein the outsole defines a first outsole section disposed within the midfoot region and the forefoot region (see annotated Fig. 4 above), and wherein the first outsole section extends continuously from the midfoot region to the forefoot region (extends from one region to the other).
Regarding claim 26, Fusco describes the sole structure of claim 25, wherein the outsole defines a second outsole section (outsole 28) that is spaced apart from the first outsole section and disposed within the heel region (see Fig. 4).
Regarding claim 27, Fusco describes the sole structure of claim 26, wherein a rear side of the second cushioning member (80) is disposed between the first outsole section (see annotated Fig. 4) and the second outsole section (28) along a direction between a toe end and a heel end of the sole structure (extends between the two outsole sections).
Regarding claim 28, Fusco describes the sole structure of claim 27, wherein the rear side of the second cushioning member (80) is spaced apart from the first point of the sole plate (space in front of and behind each insert, para. 0044).
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 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 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fusco (US 20080072462) in view of Schindler et al. (US 20090045547).
Regarding claim 24 Fusco sole structure of claim 21, but does not explicitly describe wherein the first cushioning member comprises a supercritical foam.
Fusco does describe that the first cushioning member is a shock-attenuating and energy-absorbing component and that any conventional polymer foam such as ethylvinylacetate and polyurethane foam would be suitable (para. 0018).
In related art, Schindler describes that member 60 may be formed of polyurethane of ethylvinylacetate (para. 0052) and thermoplastic polymer foam. Schindler further recites that a supercritical foam can be used for element 60 (para. 0053). Thus, Schindler teaches that EVA, PU, and supercritical foams are equivalents of one another.
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the time of filing the instant application to modify the material of the first cushioning member of Fusco to be a supercritical foam as described in Schindler as such a modification is a simple substitution of one element (EVA/PU) for another (supercritical foam) with predictable results. That is, because the materials are shown to be swappable one having ordinary skill would understand the differences when substituting the materials.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK J LYNCH whose telephone number is (571)272-1145. The examiner can normally be reached on M-Th, Alt F: 8:00 AM-5:00 PM ET.
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, Clint Ostrup can be reached on 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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/PATRICK J. LYNCH/Primary Examiner, Art Unit 3732
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