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 .
Response to Amendment
The amendments filed with the written response received on 02/05/2026 have been considered and an action on the merits follows. As directed by the amendment, claims 1, 7, 8, 13, and 18 have been amended; and claim 21 has been added. Accordingly, claims 1-21 are pending in this application. Because of the applicant's amendment, the following in the office action filed 10/24/2025, are hereby withdrawn: the drawing objections, and the claim objections.
Response to Arguments
Applicant's arguments, filed 02/05/2026, with respect to the rejection of claims under 35 USC § 103 have been considered but are moot because the arguments do not apply to the current grounds of rejection. Applicant's arguments, which appear to be drawn only to the newly amended limitations and previously presented rejections, have been considered but are moot in view of the updated ground(s) of rejection.
Drawings
The drawings were received on 02/05/2026. These drawings are acceptable and hereby entered.
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.
Claims 1-6, 11-17, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 7,263,788 B2 to Johnson.
For claim 1, Johnson discloses a sole for a sports shoe (fig. 7), comprising: a sole body(130) having a shape adapted to extend below a lower surface of a foot of a person wearing the sports shoe so to extend below a posterior contact point of the foot positioned directly below a lower end of a calcaneus, below an anteromedial contact point of the foot positioned directly below a head of a first metatarsal, and below an anterolateral contact point of the foot positioned directly below a head of a fifth metatarsal (see fig. 8 below),
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and a reinforcement element (200), the reinforcement element being adapted to extend below a plantar aponeurosis of the foot (see fig. 8), the reinforcement element comprising: a rear part (210), a front part (222c), and a central hinge (220c) connecting the front part to the rear part (see fig. 3 below),
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wherein the front part is less rigid than the rear part (connecting member 210, as a continuous structure spanning in the lateral and medial direction, would be expected to be more rigid than the narrower middle sections of the stabilizing members 220), the rear part is adapted to extend in front of the posterior contact point of the foot (see fig. 8), wherein a rearmost point or rearmost edge of the reinforcement element is positioned in front of the posterior contact point of the foot (See fig. 8), the front part comprises at least one longitudinal branch (stabilizing member 220c).
With respect to recitations regrading the adaptability of the sole body and the reinforcement element to different parts of the human foot, it is noted that these statements are being interpreted as statements of intended use. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim (See MPEP 2114(II)). Examiner notes italicized limitations in the prior art rejection are functional and do not positively recite a structural limitation, but instead require an ability to so perform. In this case, the claims are directed to a shoe sole and reinforcement element, not the human foot. Since Johnson discloses and/or teaches the claimed structural elements, one of ordinary skill in the art would have a reasonable expectation that Johnson’s shoe components are readily capable of performing the claimed intended use.
Johnson does not specifically disclose wherein the at least one longitudinal branch being adapted to extend between the anteromedial contact point and the anterolateral contact point of the foot.
However, Johnson does teach the dimensions of each individual stability member 220 may vary based on a number of different factors including the type of activity, the weight of the person wearing the footwear, and the amount of stiffness required by the individual (col. 5, line 8 to col. 6, line 6). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the extent and length of the at least one longitudinal branch is modified so as to be adapted to extend between the anteromedial contact point and the anterolateral contact point of the foot for purposes of providing the proper amount of stability, or proper structure to the sole, based on the activity being performed or the weight of the individual wearing the article of footwear, as taught by Johnson (col. 5, line 8 to col. 6, line 6 of Johnson).
For claim 2, the modified Johnson teaches the sole according to claim 1, wherein the at least one longitudinal branch comprises a first longitudinal branch and a second longitudinal branch extending parallel to the first longitudinal branch (see fig. 3 wherein the stabilizing members extended in a forward direction and do not intersect).
For claim 3, the modified Johnson teaches the sole according to claim 2, wherein the first longitudinal branch has a substantially constant width and thickness, and/or the second longitudinal branch has a substantially constant width and thickness (constant widths).
For claim 4 the modified Johnson teaches the sole according to claim 2, wherein the first longitudinal branch comprises a substantially straight inner lateral edge and a substantially straight outer lateral edge, and/or the second longitudinal branch comprises a substantially straight inner lateral edge and a substantially straight outer lateral edge (220c has straight edges).
For claim 5, the modified Johnson teaches the sole according to claim 1, wherein the rear part of the reinforcement element is adapted to extend below a navicular bone, below a cuboid bone, below cuneiform bones, and below a rear part of five metatarsals of the foot, and the at least one longitudinal branch is adapted to extend below a front part of a second metatarsal and/or below a front part of a third metatarsal (see fig. 8 and discussion regarding statements of intended use in claim 1).
For claim 6, the modified Johnson teaches the sole according to claim 1, wherein the rear part of the reinforcement element comprises a set of openings having a closed contour (212a, 212b; fig. 3).
For claim 11, the modified Johnson teaches the sole according to claim 1, wherein the central hinge forms a narrowest zone of the reinforcement element along a transverse axis (see fig. 3 wherein the center of 220c is the narrowest zone of the stability member).
For claim 12, the modified Johnson teaches the sole according to claim 1, wherein the reinforcement element is a monolithic element consisting of plastic and obtained by moulding (col. 5, lines 14-18) (Further, if the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." See MPEP 2113(I). In this case, the product formed by the “moulding” is “the reinforcement element.”).
For claim 13, the modified Johnson teaches the sole according to claim 1, wherein the sole comprises an upper part provided with an upper surface adapted to receive a lower surface of the foot (upper part of 130), the upper part comprising an upper shock-absorbing layer, the upper part extending above the reinforcement element (col. 4, lines 24-31), and/or a lower part provided with a lower surface intended to come into contact with the ground, the lower part comprising a lower shock-absorbing layer, the lower part extending below the reinforcement element (140).
For claim 14, the modified Johnson teaches the sole according to claim 1, wherein the reinforcement element comprises a visible inner face on an inner side of the sole, and/or a visible outer face on an outer side of the sole (see fig. 2).
For claim 15, the modified Johnson teaches a sports shoe comprising a sole according to claim 1 (fig. 1).
For claim 16, the modified Johnson teaches the sports shoe according to claim 15, which is a sports shoe adapted for running (Since the modified Johnson teaches the structure of a shoe capable of being use for sports, one skilled in the art would have a reasonable expectation that Johnson’s shoe is readily capable of performing the intended use of being adapted or configured for running).
For claim 17, the modified Johnson teaches the sports shoe according to claim 16, which is a sports shoe adapted for trail running (Since the modified Johnson teaches the structure of a shoe capable of being use for sports, one skilled in the art would have a reasonable expectation that Johnson’s shoe is readily capable of performing the intended use of being adapted or configured for trail running).
For claim 19, the modified Johnson teaches the sole according to claim 3, wherein the first longitudinal branch comprises a substantially straight inner lateral edge and a substantially straight outer lateral edge, and/or the second longitudinal branch comprises a substantially straight inner lateral edge and a substantially straight outer lateral edge (220c has straight edges).
For claim 20, the modified Johnson teaches the sole according to claim 19, wherein the rear part of the reinforcement element is adapted to extend below a navicular bone, below a cuboid bone, below cuneiform bones, and below a rear part of five metatarsals of the foot, and the at least one longitudinal branch is adapted to extend below a front part of a second metatarsal and/or below a front part of a third metatarsal (see fig. 8 and discussion regarding statements of intended use in claim 1).
Allowable Subject Matter
Claims 7-10 and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 21 is allowable over the prior art of record.
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 ERICK I LOPEZ whose telephone number is (571)272-3262. The examiner can normally be reached Monday - Friday: 9:00am - 5:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached at (571) 272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERICK I LOPEZ/Examiner, Art Unit 3732
/KHOA D HUYNH/Supervisory Patent Examiner, Art Unit 3732