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 .
Claim Rejections - 35 USC § 112
Claims 14-26 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 pre-AIA the applicant regards as the invention.
In claim 1, the phrase “to receive the user's foot and a sole body with a midsole with an upper surface associated with the upper to support the sole of the user's foot” it is not clear if the “midsole with an upper surface” is only functionally being recited. In the claims below it is being treated as the midsole is positively being claimed.
In claim 1, “the lower part of the upper”, “the bottom surface”, “the ground”, “the opening building part”, “the deformation of the upper”, “the centre (center)”, “edge sections” lack proper antecedent basis and therefore make the claim unclear and indefinite.
In claim 1, the phrase “the lower part of the upper facing the ground away from the opening building part of the sole body” is unclear and indefinite. It is not clear what lower part of the upper is facing the ground. Is applicant trying to refer to a surface facing the ground surface?
The term “centre” is misspelled throughout the claims. It should be “center”.
In claim 22, the phrase “made of carbon or other material having equivalent structure” is unclear and indefinite since it is not clear what other material is equivalent to carbon.
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) 14-18,20-21 and 23, as understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2007/0011914 (Keen).
Regarding claims 14-18,20-21 and 23, Keen discloses a shoe structure (e.g. 100, figures 1A-1E; 500, figure 8; and 600, figures 9A-9F; see ¶0084) comprising:
an upper (e.g. bootie 608) with a flexible body (“stretch bootie”, see ¶0085) defining a cavity with an opening to receive the user's foot and a sole body with a midsole (e.g. footbed 106) with an upper surface associated with the upper to support the sole of the user's foot,
wherein the shoe structure comprises an elastically deformable support element (e.g. stiffening member/plate 108, see ¶0049 teaching the member/plate including TPU. Therefore due to its construction it is inherently elastically deformable) fixed underneath the lower part of the upper facing the ground away from the opening building part of the sole body and
a traction element (e.g. outsole (e.g. 102,502,602 and midsole e.g.104b), configured in a grid pattern (see figs 1E,9D; spacers 150a,150b form a grid pattern) and connected at the bottom surface of the sole body, the traction element comprising a main centered non-slip surface fixed underneath the center of the sole body and edge sections, at least partly wrapped around (section in fig. 2D shows the configuration of the sole structure and the upper) the outer edge of the sole body and the lower edge of the upper,
wherein the grid-like traction element (e.g. outsole and midsole; e.g. 102,104) is adapted to contain the deformation of the upper and sole body during use of the shoe structure, cooperating with the resiliently deformable resilient support element to provide the user's foot with an elastic return of the energy stored during use of the shoe structure resulting from the elastic deformation of the grid-like traction element and the support element (the shoe structure as taught by Keen has all the structure as claimed and is inherently capable of performing the functional language as claimed).
Regarding claim 15-16, at least see figure 1A.
Regarding claim 17, see ¶0050,0051.
Regarding claim 18, see fingers (outsole/midsole has fingers 112 which wrap around the upper (e.g. 608); see figure 9A) which are flat sheet material and subsequently folded to adhere partly to the shape of the sole body and the upper.
Regarding claim 20, see lugs 53 which represent a plurality of projections, distributed in the plane of the main centered non-slip surface, projecting in the direction of the ground.
Regarding claim 21, footbed represents the first midsole and midsole 104b represents a second midsole.
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.
Claims 14-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Keen ‘914 in view of US 5528842 (Ricci).
Regarding claims 14-23, Keen discloses a shoe structure (e.g. 100, figures 1A-1E; 500, figure 8; 600, figures 9A-9F; see ¶0084) comprising:
an upper (e.g. bootie 608) with a flexible body (“stretch bootie”, see ¶0085) defining a cavity with an opening to receive the user's foot and a sole body with a midsole (e.g. footbed 106) with an upper surface associated with the upper to support the sole of the user's foot,
wherein the shoe structure comprises a support element (e.g. stiffening member/plate 108, see ¶0049 teaching the member/plate including TPU) fixed underneath the lower part of the upper facing the ground away from the opening building part of the sole body and
a traction element (e.g. outsole (e.g. 102,502,602 and midsole e.g.104b), configured in a grid pattern (see figs 1E,9D; spacers 150a,150b form a grid pattern) and connected at the bottom surface of the sole body, the traction element comprising a main centered non-slip surface fixed underneath the center of the sole body and edge sections, at least partly wrapped around (section in fig. 2D shows the configuration of the sole structure and the upper) the outer edge of the sole body and the lower edge of the upper.
Keen lacks teaching the support element (108) being an elastically deformable support element.
Ricci teaches a similar support element (insert 44) being made out of an elastically deformable material such as carbon which provides elastic return of the energy stored during use; at least see figures 6-9,19 and col. 2, lines 55-63, col. 4, lines 29-32, col. 6, line 62 to col. 6, line 13, and col. 8, lines 45-49.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the support element as taught by the shoe structure taught by Keen to be constructed like the insert as taught by Ricci, to provide improved energy return to the shoe construction during use. The shoe structure as taught by the combination above will inherently perform all the functional language claimed.
Regarding claim 15-16, at least see figure 1A of Keen.
Regarding claim 17, see ¶0050,0051 of Keen.
Regarding claim 18, Keen: see fingers (outsole/midsole has fingers 112 which wrap around the upper (e.g. 608); see figure 9A) which are flat sheet material and subsequently folded to adhere partly to the shape of the sole body and the upper.
Regarding claim 20, Keen: see lugs 53 which represent a plurality of projections, distributed in the plane of the main centered non-slip surface, projecting in the direction of the ground.
Regarding claim 21, Keen: footbed represents the first midsole and midsole 104b represents a second midsole.
Regarding claim 19, the fingers (112 – see Keen) of the grid-like traction element are relatively thin as shown in the figures as they wrap around the sole body but the thickness is not disclosed. It would appear to be an obvious design choice to construct the fingers of the grip like traction element with a thickness between 0.8 mm and 1.5 mm. inasmuch as a number of relatively smaller thickness would appear to be suitable. Since the applicant has not demonstrated or even alleged that these specifical claimed thickness produce any unexpected results, it is concluded that it would have been obvious for an artisan with ordinary skill to determine a workable or even optimum thickness for the grip-like traction element and thereby arrive with a thickness in the range as claimed by the applicant.
Regarding claim 22, see “carbon” at col. 6, line 5 of Ricci.
Regarding claim 23, see “70” in figure 6 of Ricci showing a notch in the insert.
Claim(s) 14-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Keen ‘914 in view of US 2008/0289220 (Rivas).
Regarding claims 14-23, Keen discloses a shoe structure (e.g. 100, figures 1A-1E; 500, figure 8; and 600, figures 9A-9F; see ¶0084) comprising:
an upper (e.g. bootie 608) with a flexible body (“stretch bootie”, see ¶0085) defining a cavity with an opening to receive the user's foot and a sole body with a midsole (e.g. footbed 106) with an upper surface associated with the upper to support the sole of the user's foot,
wherein the shoe structure comprises a support element (e.g. stiffening member/plate 108, see ¶0049 teaching the member/plate including TPU) fixed underneath the lower part of the upper facing the ground away from the opening building part of the sole body and
a traction element (e.g. outsole (e.g. 102,502,602 and midsole e.g.104b), configured in a grid pattern (see figs 1E,9D; spacers 150a,150b form a grid pattern) and connected at the bottom surface of the sole body, the traction element comprising a main centered non-slip surface fixed underneath the center of the sole body and edge sections, at least partly wrapped around (section in fig. 2D shows the configuration of the sole structure and the upper) the outer edge of the sole body and the lower edge of the upper.
Keen lacks teaching the support element (108) being an elastically deformable support element.
Rivas teaches a similar support plate (e.g. 501,601,1201 or 1301) being made out of an elastically deformable material such as carbon which inherently provides elastic return of the energy stored during use; at least see figures 1-14.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the support element as taught by the shoe structure taught by Keen to be constructed like the insert as taught by Rivas, to provide improved energy return to the shoe construction during use. The shoe structure as taught by the combination above will inherently perform all the functional language claimed.
Regarding claim 15-16, at least see figure 1A of Keen.
Regarding claim 17, see ¶0050,0051 of Keen.
Regarding claim 18, Keen: see fingers (outsole/midsole has fingers 112 which wrap around the upper (e.g. 608); see figure 9A) which are flat sheet material and subsequently folded to adhere partly to the shape of the sole body and the upper.
Regarding claim 20, Keen: see lugs 53 which represent a plurality of projections, distributed in the plane of the main centered non-slip surface, projecting in the direction of the ground.
Regarding claim 21, Keen: footbed represents the first midsole and midsole 104b represents a second midsole.
Regarding claim 19, the fingers (112 – see Keen) of the grid-like traction element are relatively thin as shown in the figures as they wrap around the sole body but the thickness is not disclosed. It would appear to be an obvious design choice to construct the fingers of the grip like traction element with a thickness between 0.8 mm and 1.5 mm. inasmuch as a number of relatively smaller thickness would appear to be suitable. Since the applicant has not demonstrated or even alleged that these specifical claimed thickness produce any unexpected results, it is concluded that it would have been obvious for an artisan with ordinary skill to determine a workable or even optimum thickness for the grip-like traction element and thereby arrive with a thickness in the range as claimed by the applicant.
Regarding claim 22, see “carbon” taught in ¶0034 of Rivas.
Regarding claim 23, see plates with notches in figures 5-14 of Rivas.
Regarding claims 24-26; see figures 7,8,12 and 13 of Rivas showing plates with a pair of wings arranged in correspondence with the lateral areas of the upper wrapping around the heel area, the pair of wings extending, one on each side, from the support element towards the lateral walls of the upper. Regarding claim 25, see figures 7,8 and 13 of Rivas showing the pair of wings is obtained in one piece with the support element. Regarding claim 26, see figures 12 of Rivas showing the pair of wings (1202) consists of separate elements associated with the support element (1201).
With regard to all of the functional claim language and statements of intended use do not make an otherwise unpatentable claim patentable. It is believed to be well settled that "recitation with respect to manner in which claimed apparatus is intended to be employed does not differentiate claimed apparatus from prior art apparatus satisfying structural limitations of that claimed" Ex parte Masham 2 USPQ2nd 1647. Also see Ex parte Casey 152 USPQ 235. The law of anticipation does not require that an anticipatory reference teach what the applicant is claiming or has disclosed, but only that the claims "read on" something disclosed in the reference, i.e., all limitations of the claim are found in the reference. See Kalman v. Kimberly Clark Corp., 713 F.2d 760, 218 USPQ 871 (Fed Cir. 1983). Furthermore, it is only necessary that the reference include structure capable of performing the recited function in order to meet the functional limitations of a claim. See In re Mott, 557 F.2d 266, 194 USPQ 305 (CCPA 1977). Since the article of footwear as taught by the combination above has all of the same structural elements, as noted above, it would inherently be capable of performing the functions as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art cited and not relied upon by the Examiner for the above rejections are considered to be pertinent in that the references cited are considered to be the nearest prior art to the subject matter defined in the claims as required by MPEP707.05.
Applicant is duly reminded that a complete response must satisfy the requirements of 37 C.F. R. 1.111, including:
-“The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.”
--“A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.”
-Moreover, “The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP 2163.06” MPEP 714.02. The “disclosure” includes the claims, the specification and the drawings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TED KAVANAUGH whose telephone number is (571) 272-4556. The examiner can normally be reached on Monday-Thursday 8AM-6PM.
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/Ted Kavanaugh/
Primary Patent Examiner
Art Unit 3732
Tel: (571) 272-4556
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