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 preliminary amendment received on May 20, 2025, claims 1-8 have canceled. Claims 9-13 are new. Accordingly, claims 9-13 are currently pending in this application. An action on the merits follows.
Specification – Abstract
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because at line 1, “The present invention provides” is implied phraseology. It is suggested that the phrase be removed from the abstract. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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, claims 11-13 are objected to because the claims are separated from a dependent claim by a claim which does not also depend from said dependent claim (i.e., separated from claim 9 by claim 10 which does not depend from claim 9).
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 9-13 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 9 recites “wherein in the outsole, a first lower surface on a back side of a portion on which a heel of a foot is placed and a second lower surface on a back side of a portion on which a ball of the foot and a ball of the little toe of the foot are placed are formed” at lines 2-5. Due to the awkward phrasing of the limitation, it is unclear if the lower surface, one or more back sides, and portions are meant to be part of the outsole or some separate structure of the shoe. Furthermore, if belonging to the outsole, it is unclear what surface, side, and portions are being claimed, as the surfaces are described as being “lower” without some other higher structure or element. Additionally, it is unclear exactly where on the shoe structure the portions are located, as the limitation describes the portions with respect to the apparent presence of a foot of a wearer (See 101 rejection below for additional discussion). 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 outsole comprises a first surface on a back side of a first portion of the outsole, a face side of the first portion being configured for placement of a heel of a foot, and a second surface on a back side of a second portion of the outsole, a face side of the second portion being configured for placement of a ball of the foot and a ball of a little toe of the foot”. 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 10 recites similar language as discussed above and is similarly rejected.
Claim 9 further recites the limitation “in the outsole, a third lower surface on a back side of a portion on which toe tips of the foot are placed is formed to be flat and is provided with a step portion such that the third lower surface is positioned above the second lower surface” at lines 6-9. Similar to the discussion above, due to the awkward phrasing of the limitation, it is unclear if the lower surface, back side, and portion are meant to be part of the outsole or some separate structure of the shoe. Furthermore, if belonging to the outsole, it is unclear what surface, side, and portion are being claimed, as the surface is described as being “lower” without some other higher structure or element. Additionally, it is unclear exactly where on the shoe structure the portion is located, as the limitation describes the portions with respect to the apparent presence of a foot of a wearer (See 101 rejection below for additional discussion). 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 outsole further comprises a third surface on a back side of a third portion of the outsole, a face side of the third portion being configured for placement of toe tips of the foot, the third portion being flat and provided with a step portion such that the third surface is positioned above the second surface”. 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 10 recites similar language as discussed above and is similarly rejected.
Claim 9 further recites the limitation “in a face side of the portion on which the toe tips of the foot are placed, in order to expand a movable range of a big toe and other toes, a plurality of lateral grooves which extend in a width direction of the portion on which the toe tips of the foot are placed are formed along joints of the big toe and the other toes” at lines 10-13. Due to the compounding effect of the awkward phrasing discussed above, it is unclear where exactly the lateral grooves are located. Furthermore, the portions of the outsole continue to be described with respect to the apparent presence of a foot of a wearer. 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 third portion comprises a plurality of lateral grooves on the face side of the third portion, wherein the lateral grooves extend in a width direction of the third portion and are configured to be positioned along joints of a big toe and the other toes of the foot and expand a movable range of the big toe and the other toes of the foot”. 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 10 recites similar language as discussed above and is similarly rejected.
Claim 9 further recites the limitation “such that a width of each groove stepwise becomes wider toward a tip end side of the toe tips” at lines 13-14. It is unclear which direction is intended by the limitation, as the limitation again recites the direction with respect to an apparent foot of a wearer. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. It is suggested that the limitation instead read “and wherein a width of each of the plurality of lateral grooves increases stepwise in a direction extending toward a front end of the outsole”. 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 10 further recites the limitation “such that a depth of each groove becomes deeper toward a width-direction inner side of the toe tips” at lines 13-14. It is unclear which direction is intended by the limitation, as the limitation again recites the direction with respect to an apparent foot of a wearer. Furthermore, it is unclear which side of the outsole is intended by “a width-direction inner side of the toe tips”. 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 “and wherein a depth of each of the plurality of lateral grooves increases in the width-direction from a lateral side to a medial side of the outsole”. 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 11 recites the limitation “the lateral grooves” at lines 2. There is insufficient antecedent basis for this limitation in the claim. 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 plurality of lateral grooves”. 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 11 further recites the limitation “a portion on which the big toe is placed […] a portion on which the other toes are placed” at lines 2-4. Due to the awkward and ambiguous phrasing used throughout the claims, it is unclear the relation of the portions to the previously introduced portions of claim 9. Furthermore, it is unclear where exactly on the outsole, the newly recited portions are meant to be located, as the portions are again recited with respect to an apparent foot of a wearer. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. It is suggested that the limitation instead read “a fourth portion of the outsole configured for placement of the big toe […] a fifth portion configured for placement of the other toes”. 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 12 recites the limitation “the number of the first lateral grooves is two, corresponding to the number of joints of the big toe, and the number of the second lateral grooves is three, corresponding to the number of joints of each of the other toes” at lines 2-3. There is insufficient antecedent basis for each instance of “the number” in the claim. Furthermore, it is unclear if the claim is requiring the presence of the joints of recited toes. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. It is suggested that the limitation instead read “a number of the plurality of first lateral grooves is two and configured to correspond to a number of joints of the big toe, and a number of the plurality of second lateral grooves is three and configured to correspond to a number of joints of each of the other toes”. 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 13 recites the limitation “the plurality of lateral grooves curve along the joints of the big toe and the other toes” at line 2. It is unclear if the claim is requiring the presence of the joints of recited toes. 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 plurality of lateral grooves are configured to curve along joints of the big toe and the other toes”. 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.
Claims 11-13 are also rejected for being dependent on a rejected claim.
An effort has been made to identify all indefinite language with the pending claims. However, Examiner notes that the claims are replete with indefinite language, and the above listing of 35 U.S.C. § 112 rejections may not be conclusive. Applicant is required to review every claim for compliance to 35 U.S.C. § 112(b) so as to facilitate a clear understanding of the claimed invention and proper application of the prior art.
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 9-13, 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 9 recites the limitation “wherein in the outsole, a first lower surface on a back side of a portion on which a heel of a foot is placed and a second lower surface on a back side of a portion on which a ball of the foot and a ball of the little toe of the foot are placed are formed” at lines 2-5. In order to overcome the rejection, it is suggested that the limitation instead read “wherein the outsole comprises a first surface on a back side of a first portion of the outsole, a face side of the first portion being configured for placement of a heel of a foot, and a second surface on a back side of a second portion of the outsole, a face side of the second portion being configured for placement of a ball of the foot and a ball of a little toe of the foot”. Claim 10 recites similar language as discussed above and is similarly rejected.
Claim 9 further recites the limitation “in the outsole, a third lower surface on a back side of a portion on which toe tips of the foot are placed is formed to be flat and is provided with a step portion such that the third lower surface is positioned above the second lower surface” at lines 6-9. In order to overcome the rejection, it is suggested that the limitation instead read “wherein the outsole further comprises a third surface on a back side of a third portion of the outsole, a face side of the third portion being configured for placement of toe tips of the foot, the third portion being flat and provided with a step portion such that the third surface is positioned above the second surface”. Claim 10 recites similar language as discussed above and is similarly rejected.
Claim 9 further recites the limitation “in a face side of the portion on which the toe tips of the foot are placed, in order to expand a movable range of a big toe and other toes, a plurality of lateral grooves which extend in a width direction of the portion on which the toe tips of the foot are placed are formed along joints of the big toe and the other toes” at lines 10-13. In order to overcome the rejection, it is suggested that the limitation instead read “wherein the third portion comprises a plurality of lateral grooves on the face side of the third portion, wherein the lateral grooves extend in a width direction of the third portion and are configured to be positioned along joints of a big toe and the other toes of the foot and expand a movable range of the big toe and the other toes of the foot”. Claim 10 recites similar language as discussed above and is similarly rejected.
Claim 9 further recites the limitation “such that a width of each groove stepwise becomes wider toward a tip end side of the toe tips” at lines 13-14. In order to overcome the rejection, it is suggested that the limitation instead read “and wherein a width of each of the plurality of lateral grooves increases stepwise in a direction extending toward a front end of the outsole”.
Claim 10 further recites the limitation “such that a depth of each groove becomes deeper toward a width-direction inner side of the toe tips” at lines 13-14. In order to overcome the rejection, it is suggested that the limitation instead read “and wherein a depth of each of the plurality of lateral grooves increases in the width-direction from a lateral side to a medial side of the outsole”.
Claim 11 recites the limitation “a portion on which the big toe is placed […] a portion on which the other toes are placed” at lines 2-4. In order to overcome the rejection, it is suggested that the limitation instead read “a fourth portion of the outsole configured for placement of the big toe […] a fifth portion configured for placement of the other toes”.
Claim 12 recites the limitation “the number of the first lateral grooves is two, corresponding to the number of joints of the big toe, and the number of the second lateral grooves is three, corresponding to the number of joints of each of the other toes” at lines 2-3. In order to overcome the rejection, it is suggested that the limitation instead read “a number of the plurality of first lateral grooves is two and configured to correspond to a number of joints of the big toe, and a number of the plurality of second lateral grooves is three and configured to correspond to a number of joints of each of the other toes”.
Claim 13 recites the limitation “the plurality of lateral grooves curve along the joints of the big toe and the other toes” at line 2. In order to overcome the rejection, it is suggested that the limitation instead read “the plurality of lateral grooves are configured to curve along joints of the big toe and the other toes”.
Claims 11-13 are 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 9 and 11-13, as best can be understood, are rejected under 35 U.S.C. 103 as being unpatentable over USPN 7,225,564 to Gillespie (hereinafter, “Gillespie”) in view of US 2012/0174439 to O’Connor (hereinafter, “O’Connor”).
Regarding claim 9, Gillespie teaches a shoe structure comprising an outsole (See Gillespie, Figs. 1-4; shoe (10) having outsole (18); abstract), wherein in the outsole, a first lower surface on a back side of a portion on which a heel of a foot is placed (See annotated Fig. 4 of Gillespie below; first surface of outsole (18), an opposite face side of which is capable of accommodating a heel of a foot of a hypothetical wearer; 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)) and a second lower surface on a back side of a portion on which a ball of the foot and a ball of the little toe of the foot are placed are formed (See annotated Fig. 4 of Gillespie below; second surface of outsole (18), an opposite face side of which is capable of accommodating a ball and little toe ball of a foot of a hypothetical wearer), in the outsole, a third lower surface on a back side of a portion on which toe tips of the foot are placed is formed to be flat (See annotated Fig. 4 of Gillespie below; third surface of outsole (18), an opposite face side of which is capable of accommodating toe tips of a foot of a hypothetical wearer; the portion is flat inasmuch as Applicant’s disclosed portion is flat) and is provided with a step portion such that the third lower surface is positioned above the second lower surface (See annotated Fig. 4 of Gillespie below; second and third surfaces separated by step portion; third surface is positioned above second surface), and in a face side of the portion on which the toe tips of the foot are placed, in order to expand a movable range of a big toe and other toes, a plurality of lateral grooves which extend in a width direction of the portion on which the toe tips of the foot are placed are formed along joints of the big toe and the other toes (See Gillespie, Figs. 1-4; lateral grooves on portion of outsole (18) opposite third surface extend in a width direction, are capable of expanding a movable range of toes of a hypothetical foot, and are capable of being positioned along joints of toes of a hypothetical foot as claimed; See Col. 3, lines 1-2).
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Annotated Fig. 4 of Gillespie
That said, Gillespie is silent to such that a width of each groove stepwise becomes wider toward a tip end side of the toe tips.
However, O’Connor, in a related grooved sole structure footwear art, is directed to an article of footwear having a plurality of alternating ribs and grooves on a sole surface (See O’Connor, Figs. 1-11; abstract). More specifically, O’Connor teaches such that a width of each groove stepwise becomes wider toward a tip end side of the toe tips (See O’Connor, Fig. 11; width (172) of lateral grooves (117) increase toward forefoot of sole; [0043]-[0044]).
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 gradually increase the width of the grooves of Gillespie as the grooves approach the forefoot end of the sole structure of Gillespie as disclosed by O’Connor in order to provide more closely packed ribs between grooves to provide improved support and impact attenuation under a ball of a wearer’s foot while maintaining flexibility from the grooves (See O’Connor, [0043]-[0044]).
Regarding claim 11, the modified shoe structure of Gillespie (i.e., Gillespie in view of O’Connor, as discussed with respect to claim 9 above) further teaches wherein the lateral grooves include a plurality of first lateral grooves, which are formed in a portion on which the big toe is placed (See Gillespie, Fig. 2; top two of grooves (26) are capable of having a big toe of a foot of a hypothetical wearer positioned thereon), and a plurality of second lateral grooves, which are formed in a portion on which the other toes are placed (See Gillespie, Fig. 2; bottom three of grooves (26) are capable of having toes other than a big toe of a foot of a hypothetical wearer positioned thereon).
Regarding claim 12, the modified shoe structure of Gillespie (i.e., Gillespie in view of O’Connor, as discussed with respect to claims 9 and 11 above) further teaches wherein the number of the first lateral grooves is two, corresponding to the number of joints of the big toe, and the number of the second lateral grooves is three, corresponding to the number of joints of each of the other toes (See Gillespie, Fig. 2; top two of grooves (26) are capable of having a big toe of a foot of a hypothetical wearer positioned thereon; bottom three of grooves (26) are capable of having toes other than a big toe of a foot of a hypothetical wearer positioned thereon).
Regarding claim 13, the modified shoe structure of Gillespie (i.e., Gillespie in view of O’Connor, as discussed with respect to claim 9 above) further teaches wherein the plurality of lateral grooves curve along the joints of the big toe and the other toes (See Gillespie, Fig. 2; grooves (26) have at least some curvature and are capable of corresponding to joints of toes of a foot of a hypothetical wearer).
Claim 10, as best can be understood, is rejected under 35 U.S.C. 103 as being unpatentable over Gillespie in view of US 2012/0079740 to Zhou (hereinafter, “Zhou”).
Regarding claim 10, Gillespie teaches a shoe structure comprising an outsole (See Gillespie, Figs. 1-4; shoe (10) having outsole (18); abstract), wherein in the outsole, a first lower surface on a back side of a portion on which a heel of a foot is placed (See annotated Fig. 4 of Gillespie above; first surface of outsole (18), an opposite face side of which is capable of accommodating a heel of a foot of a hypothetical wearer; 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)) and a second lower surface on a back side of a portion on which a ball of the foot and a ball of the little toe of the foot are placed are formed (See annotated Fig. 4 of Gillespie above; second surface of outsole (18), an opposite face side of which is capable of accommodating a ball and little toe ball of a foot of a hypothetical wearer), in the outsole, a third lower surface on a back side of a portion on which toe tips of the foot are placed is formed to be flat (See annotated Fig. 4 of Gillespie above; third surface of outsole (18), an opposite face side of which is capable of accommodating toe tips of a foot of a hypothetical wearer; the portion is flat inasmuch as Applicant’s disclosed portion is flat) and is provided with a step portion such that the third lower surface is positioned above the second lower surface (See annotated Fig. 4 of Gillespie above; second and third surfaces separated by step portion; third surface is positioned above second surface), and in a face side of the portion on which the toe tips of the foot are placed, in order to expand a movable range of a big toe and other toes, a plurality of lateral grooves which extend in a width direction of the portion on which the toe tips of the foot are placed are formed along joints of the big toe and the other toes (See Gillespie, Figs. 1-4; lateral grooves on portion of outsole (18) opposite third surface extend in a width direction, are capable of expanding a movable range of toes of a hypothetical foot, and are capable of being positioned along joints of toes of a hypothetical foot as claimed; See Col. 3, lines 1-2).
That said, Gillespie is silent to such that a depth of each groove becomes deeper toward a width-direction inner side of the toe tips.
However, Zhou, in a related grooved sole structure footwear art, is directed to a shoe having a cushioning and stability system for reducing the likelihood that a user will roll and sprain their ankle and providing support for lateral movements (See Zhou, Fig. 8; abstract). More specifically, Zhou teaches such that a depth of each groove becomes deeper toward a width-direction inner side of the toe tips (See Zhou, Figs. 10 and 14; grooves (223) in sole structure increase in depth from lateral side to medial side of sole structure; [0021]).
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 incorporate the slanted groove configuration of Zhou by increasing the depth of the lateral grooves of Gillespie in a direction from lateral to medial sides of the sole structure as disclosed by Zhou in order to allow for greater compression and allow for a wearer to have a better angle to push their foot off for more force and stability (See Zhou, [0021], [0025]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure. US 2018/0042338 to Orand; US 2016/0219973 to Cheney et al.; USPN 4,694,591 to Banich et al.; US 2017/0127755 to Bunnell et al.; US 2017/0079376 to Bunnell et al.; USPN 4,624,061 to Wezel et al.; USPN 2,201,300 to Prue; US 2001/0032400 to Brooks; US 2015/0250260 to Bessho et al.; US 2011/0126428 to Hazenberg et al.; US 2023/0371644 to Iuchi et al.; and WO 2010/049725 to Toon et al. are each directed to sole structures for articles of footwear having grooved surfaces.
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.
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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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