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
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 14, 15 and 18-20 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.
Claims 14 and 15 are confusing, vague, and indefinite because it appears to refer to a method of manufacture, but it is not clear what structural limitations applicant intends to encompass with such an article claim.
Claim 18 recites intended uses or intended functions but this claim does not recite structures to be claimed and therefore it is not clear what structural limitations applicant intends to encompass with such language.
Claim 19 is confusing, vague, and indefinite and it is not clear what applicant is referring to or what applicant intends to encompass with such language.
Claim 20 appears to encompass all possible arrangements and therefore it is not further limiting making the claim confusing, vague, and indefinite.
Claim Rejections - 35 USC § 102
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) 1-3 and 5-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticiapted by Davis (2017/0295886).
Davis shows A sole for a shoe (see figure 1), comprising:
a midsole (150); and
at least one ground-contacting support element (170) comprising a foam material (see paragraphs [0057]-[0060]) and being distinct from the midsole (see paragraphs [0057]-[0060]);
wherein the foam material of the at least one ground-contacting support
element is stiffer than a midsole material (see paragraphs [0059]- [0060] which discusses making the midsole 150 from a material having a lower modulus than the material of the ground contacting support element 170 and see paragraph [0057] which discusses the ground contacting element having traction means) as claimed or substantially as claimed. Davis clearly suggests a greater modulus for the material for the ground contacting support element which would inherently result in the ground contacting element being stiffer than the midsole.
In reference to claim 2, see figures 1 and 2.
In reference to claims 3, 5, and 6, see paragraph [0058].
In reference to claim 7, see paragraph [0075].
In reference to claims 8-10, see paragraph [0072].
In reference to claim 11, see figure 2.
In reference to claim 12, see paragraph [0050].
In reference to claim 13, the length of the ground contacting element shown in Davis is inherently greater than 15 cm due to the well known sizes of footwear.
In reference to claims 14 and 15, these claims are considered to be directed towards an intended method of making the sole and a comparison of the recited process with the prior art processes does NOT serve to resolve the issue concerning patentability of the product. In re Fessman, 489 F2d 742, 180 U.S.P.Q. 324 (CCPA 1974). Whether a product is patentable depends on whether it is known in the art or it is obvious, and is not governed by whether the process by which it is made is patentable. In re Klug, 333 F2d 905, 142 U.S.P.Q. 161 (CCPA 1964). In an ex parte case, product-by-process claims are not construed as being limited to the product formed by the specific process recited. In re Hirao et al., 535 F2d 67, 190 U.S.P.Q. 15, see footnote 3 (CCPA 1976).
In reference to claim 16, see figures 1, 3, 4, 7, and 8 as well as other figures.
In reference to claim 17, see paragraph [0087].
In reference to claim 18, see paragraph [0057].
In reference to claim 19, see figure 1 which shows such inasmuch as the claim is understood.
In reference to claim 20, see figures 1 and 2.
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.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Davis.
Davis shows a shoe sole substantially as claimed except for the exact hardness of the ground contacting element. Davis suggests the use of different hardness (see paragraphs [0060]-[0061]). It would have been obvious to one having ordinary skill in the art at the time the invention was made to use materials with the claimed harndess, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. It also would have been obvious to use materials with the claimed parameters since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
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.
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/MARIE D BAYS/Primary Examiner, Art Unit 3732