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
In accordance with Applicant’s amendment, claims 1-6, 8, 11-19 are amended. Claim 7 is canceled. Claims 1-6, 8-19 are currently pending and presented for examination on the merits.
Applicant’s amendment has overcome the previously presented objections to the abstract.
Applicant’s amendment has overcome the previously presented objections to the drawings, and it has introduced new ones.
Applicant’s amendment has overcome some of the previously presented rejections under 35 USC 112(b), but not all of them, and it has introduced new ones.
Response to Arguments
Applicant’s arguments filed 3/25/2026 with respect to claim(s) 1 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. In light of Applicant’s amendment, which has introduced new structural limitations that have altered the scope of the claims, the search has been updated and new prior art has been identified and applied, as described in the rejections below.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “a topmost portion of the connection portion covers an outer surface of a bottommost protrusion structure” (claim 1) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to because of the following informalities: “each protrusion” in lines 6-7 should likely be “each arc-shaped protrusion” to clarify and distinguish these components from the later claimed “protrusion structures”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 6, 17 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 6, the claim recites the limitation “the angle ∠CAB is defined as µ, 20°≤µ≤60°”. There is insufficient support in the disclosure as originally filed for this limitation in the claim. The specification only states in paragraph 54, “∠CAB is defined as μ, 20°≤μ≤90°. Furthermore, μ is preferably 60°.” Therefore, the specification lacks support for the specific claimed exclusion of the angles between 60-90° in the range.
Regarding claim 17, the claim recites the limitation “the angle ∠CAB is defined as µ, 20°≤µ≤60°”. There is insufficient support in the disclosure as originally filed for this limitation in the claim. The specification only states in paragraph 54, “∠CAB is defined as μ, 20°≤μ≤90°. Furthermore, μ is preferably 60°.” Therefore, the specification lacks support for the specific claimed exclusion of the angles between 60-90° in the range.
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 1-2, 4-5, 12-13, 15-16, 18 (and claims 3, 6, 8-11, 14, 17, 19 at least for depending from a rejected base claim) 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.
Regarding claim 1, the claim recites the limitation “a topmost portion of the connection portion covers an outer surface of a bottommost protrusion structure”. Firstly, the limitation “a bottommost protrusion structure” is unclear because there are multiple protrusion structures claimed. As best can be understood by Examiner, this limitation is referring to a bottommost one of the previously recited protrusion structures. This limitation is further unclear because it cannot be readily determined what it means for the topmost portion of the connection portion to “cover” an outer surface of a bottommost protrusion structure based on the disclosure. In figures 3 and 5, these components just appear to meet at a flush point, and it doesn’t appear that any part of either one is “covering” another, as highlighted in the annotated figures below. For the purposes of examination, if the prior art discloses the two portions meeting or joining together, it will be understood to be “covering” insofar as claimed or described in the instant application.
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Regarding claim 2, the claim recites the limitation “the protrusion structures protrude outward from an outer side of the heel counter body”. This limitation is unclear because the protrusion structures as illustrated appear to form a corrugated structure, but do not “protrude outward from an outer side of the heel counter body” because they actually form the outer side of the heel counter body. In other words, the outer side of the heel counter body has a folded/corrugated shape that Applicant is calling “protrusion structures”, but these “protrusion structures” are not structures that protrude out from a surface of the heel counter body (i.e., like a raised ridge or a peg); rather, the heel counter body itself has a folded/corrugated structure with no extra protruding components added onto it. For the purposes of examination, if the prior art has the folded/corrugated structure as shown in the instant application, it will be considered to read on the claim insofar as can be understood.
Further regarding claim 2, the claim recites the limitation “a thickness H1 of each of the protrusion structures oriented toward the edge and a thickness H2 of each of the protrusion structures oriented towards a centerline of the heel counter body”. These limitations are unclear because firstly, it is unclear what it means for a thickness to be “oriented toward” something. Where is the measurement being taken from? A thickness is generally defined as the distance between two surfaces, but it is unclear which surfaces the thickness is being measured between in the context of the claim. Further, “the edge” lacks antecedent basis. The previous recitation of “an edge of a heel counter body” in lines 4-5 of the claim is not necessarily required by the claim (it is introduced in a different alternative requirement), so it is unclear whether this recitation of “the edge” is intended to refer to the previously introduced edge or not.
Regarding claim 4, the claim recites the limitation “in a side view of the heel counter structure, the guide surface comprises a guide section and a support section connected to the guide section”. The addition of “in a side view of the heel counter structure” to the beginning of this limitation is confusing because it appears to be stating that the guide section and support section only need to be present when in a side view?
Further regarding claim 4, the claim recites the limitation “the guide section is inclined upward and rearward at an angle of β relative to the vertical direction”. This limitation is unclear because (1) it is unclear what it means for something to be inclined “upward” relative to the vertical direction, as it already seems like the vertical direction would indicate upward and (2) it is unclear what it means for something to be inclined “rearward” relative to the vertical direction because there is no indication of what would be considered front/rear in reference to a vertical direction. The description found in claim 5 regarding the angle β (“a tangent line of an inner side of the guide section and a horizontal plane where the guide section is located form the angle of β”) is more clear, and for the purposes of examination, if the prior art reads on claim 5’s definition of the angle β, it will also be held to read on the recitation in claim 4.
Further regarding claim 4, the claim recites the limitation “the support section is arc-shaped from top to bottom in a side view of the heel counter structure”. Is this “side view” the same “side view” that was recited in line 2 of the claim? Further, it is unclear what orientation “from top to bottom” is meant to define. Would something that is “arc-shaped from top to bottom” be different from something that is “arc-shaped from bottom to top”?
Regarding claim 5, the claim recites the limitation “a thickness D1 of the support section oriented towards the guide section and a thickness D2 of the support section oriented towards the movable portion”. These limitations are unclear because firstly, it is unclear what it means for a thickness to be “oriented toward” something. Where is the measurement being taken from? A thickness is generally defined as the distance between two surfaces, but it is unclear which surfaces the thickness is being measured between in the context of the claim.
Regarding claim 12, the claim depends from claim 7, but claim 7 has been canceled. The limitations that were previously in claim 7 have now been added into claim 1. Claim 7 previously only depended from claim 1, so it would be reasonable to assume that claim 12 should now depend from claim 1; however, if that is the case, then claim 12 is identical to claim 8. It is unclear whether claim 12 should depend from a different claim, but for the purposes of examination it can only be interpreted as depending from claim 1 and therefore it will be considered rejected in the same manner as applied to claim 8.
Regarding claim 13, the claim recites the limitation “the protrusion structures protrude outward from an outer side of the heel counter body”. This limitation is unclear because the protrusion structures as illustrated appear to form a corrugated structure, but do not “protrude outward from an outer side of the heel counter body” because they actually form the outer side of the heel counter body. In other words, the outer side of the heel counter body has a folded/corrugated shape that Applicant is calling “protrusion structures”, but these “protrusion structures” are not structures that protrude out from a surface of the heel counter body (i.e., like a raised ridge or a peg); rather, the heel counter body itself has a folded/corrugated structure with no extra protruding components added onto it. For the purposes of examination, if the prior art has the folded/corrugated structure as shown in the instant application, it will be considered to read on the claim insofar as can be understood.
Further regarding claim 13, the claim recites the limitation “a thickness H1 of each of the protrusion structures oriented toward the edge and a thickness H2 of each of the protrusion structures oriented towards a centerline of the heel counter body”. These limitations are unclear because firstly, it is unclear what it means for a thickness to be “oriented toward” something. Where is the measurement being taken from? A thickness is generally defined as the distance between two surfaces, but it is unclear which surfaces the thickness is being measured between in the context of the claim. Further, “the edge” lacks antecedent basis. The previous recitation of “an edge of a heel counter body” in lines 4-5 of the claim is not necessarily required by the claim (it is introduced in a different alternative requirement), so it is unclear whether this recitation of “the edge” is intended to refer to the previously introduced edge or not.
Regarding claim 15, the claim recites the limitation “in a side view of the heel counter structure, the guide surface comprises a guide section and a support section connected to the guide section”. The addition of “in a side view of the heel counter structure” to the beginning of this limitation is confusing because it appears to be stating that the guide section and support section only need to be present when in a side view?
Further regarding claim 15, the claim recites the limitation “the guide section is inclined upward and rearward at an angle of β relative to the vertical direction”. This limitation is unclear because (1) it is unclear what it means for something to be inclined “upward” relative to the vertical direction, as it already seems like the vertical direction would indicate upward and (2) it is unclear what it means for something to be inclined “rearward” relative to the vertical direction because there is no indication of what would be considered front/rear in reference to a vertical direction. The description found in claim 16 regarding the angle β (“a tangent line of an inner side of the guide section and a horizontal plane where the guide section is located form the angle of β”) is more clear, and for the purposes of examination, if the prior art reads on claim 16’s definition of the angle β, it will also be held to read on the recitation in claim 15.
Further regarding claim 15, the claim recites the limitation “the support section is arc-shaped from top to bottom in a side view of the heel counter structure”. Is this “side view” the same “side view” that was recited in line 2 of the claim? Further, it is unclear what orientation “from top to bottom” is meant to define. Would something that is “arc-shaped from top to bottom” be different from something that is “arc-shaped from bottom to top”?
Regarding claim 16, the claim recites the limitation “a thickness D1 of the support section oriented towards the guide section and a thickness D2 of the support section oriented towards the movable portion”. These limitations are unclear because firstly, it is unclear what it means for a thickness to be “oriented toward” something. Where is the measurement being taken from? A thickness is generally defined as the distance between two surfaces, but it is unclear which surfaces the thickness is being measured between in the context of the claim.
Regarding claim 18, the claim recites “The shoe of claim 9, wherein the heel counter body further comprises a connection portion; the connection portion and the guide portion are located at two opposite side ends of the movable portion respectively; and the connection portion is connected to the movable portion”, which is already recited directly in claim 1. Claim 9 depends from claim 1, so claim 18 also indirectly depends from claim 1, therefore it is unclear whether this is a recitation of an additional instance of all of these features or if these are all referring to the same components that were recited in claim 1. For the purposes of examination, the limitations in this claim are being considered inadvertent duplicates of the limitations newly recited in claim 1, so if the prior art meets claim 1 and 9, it also meets claim 18.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 18 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 18 recites “The shoe of claim 9, wherein the heel counter body further comprises a connection portion; the connection portion and the guide portion are located at two opposite side ends of the movable portion respectively; and the connection portion is connected to the movable portion”, which is already recited directly in claim 1. Claim 9 depends from claim 1, so claim 18 also indirectly depends from claim 1, therefore claim 18 fails to further limit the subject matter of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-3, 6, 8-14, 17-19, as best as can be understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Beers (US 2022/0071354) in view of Wang (US 2024/0324727).
Regarding claim 1 as best understood by Examiner, Beers discloses: A heel counter structure with a rebound function, comprising a heel counter body (2810), wherein the heel counter body is provided with a guide portion (2823) and a movable portion (portion of 2815, see annotated figure 68 below) connected to the guide portion; the heel counter body further comprises a connection portion (portion of 2815, see annotated figure 68 below); the connection portion and the guide portion are located at two opposite side ends of the movable portion respectively (see figure 68); and the connection portion is connected to the movable portion (see figure 68, 69); a bottom of the connection portion is provided with at least one arc-shaped protrusion (the ridges 2880B form protrusions and they are arc-shaped as shown in figure 68 and 69; “the first and second sets are configured so that the ridges and grooves can follow the contours of the upper 38” paragraph 246); the guide portion is provided with a guide surface (interior surface of flange 2823 is considered a guide surface); the movable portion is provided with protrusion structures (the first set of ridges 2881A and grooves 2880A are protrusion structures as defined by the claim); and the protrusion structures are connected to the guide surface (see figure 68), a topmost portion of the connection portion covers an outer surface of a bottommost protrusion structure (the top of the connection portion (second set of ridges 2881B and grooves 2880B) covers an outer surface of a bottommost protrusion structure (bottommost ridge/groove of the first set of ridges 2881A and grooves 2880A) insofar as understood because they meet as shown in figure 71A, see 35 USC 112(b) rejection of this claim above); and the protrusion structures are able to perform a compression contraction movement and a rebound recovery movement (“The corrugated body 2815 compresses under an applied force F to a loaded position shown in FIG. 71B. In the loaded position, the corrugated body 2815 compresses (e.g., by folding) so that adjacent ones of the alternating ridges 2881 are closer to one another than in the unloaded position, particularly at the center segment 2816, storing elastic energy that returns the corrugated body 2815 to the unloaded position upon removal of the applied force F” paragraph 245).
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Beers does not explicitly disclose: each protrusion is provided with at least one through-hole.
However, Wang teaches a heel counter body (2) wherein the bottom of the heel counter body is provided with at least one through hole (201; see figure 7).
Wang teaches analogous art to the instant application in the field of heel counters for footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to add air holes to the bottom of the heel counter of Beers along the protrusion of the connection portion (as illustrated in annotated figure 68 of Beers above) in order to “[increase] the breathability of the shoe so as to ensure comfort of wearing the shoe” (Wang, paragraph 32).
Regarding claim 2 as best understood by Examiner, Beers as modified discloses: The heel counter structure with the rebound function according to claim 1, wherein the protrusion structures protrude outward from an outer side of the heel counter body (see annotated figure 68 of Beers provided with the 35 USC 103 rejection of claim 1 above; the body 2815 is also described as corrugated in paragraph 245 and shown in figure 71A, so it is understood to have the claimed structure insofar as can be determined; Examiner notes that the other limitations in this claim are alternatives so only one of the three limitations must be met in order to read on the claim, so the other limitations in this claim are not required because the first limitation has been met by the prior art); or a left side end and a right side end of each of the protrusion structures extends to an edge of the heel counter body; or a thickness H1 of each of the protrusion structures oriented towards the edge and a thickness H2 of each of the protrusion structures oriented towards a centerline of the heel counter body satisfy a following relational expression: H2>H1.
Regarding claim 3, Beers as modified discloses: The heel counter structure with the rebound function according to claim 1, wherein each of the protrusion structures comprises at least one first fold edge and at least one second fold edge obliquely connected to the first fold edge; and the first fold edge and the second fold edge form an interior angle of α, and α is in a range of 10° to 30° (see annotated figure 71B below showing the first fold edge and second fold edge and how the interior angle appears to be 30°).
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However, assuming arguendo that the above figure is not an explicit teaching of the interior angle being in the range of 10° to 30°, it further would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application for the angle between the fold edges to be in the range of 10° to 30° as it is described in paragraph 245 of Beers that “In the loaded position, the corrugated body 2815 compresses (e.g., by folding) so that adjacent ones of the alternating ridges 2881 are closer to one another than in the unloaded position, particularly at the center segment 2816, storing elastic energy that returns the corrugated body 2815 to the unloaded position upon removal of the applied force F.”. Therefore, the angle between the fold edges is a result-effective variable that depends on the amount of force applied to the heel counter body. One of ordinary skill in the art would understand that, given the right amount of force, the corrugated body of Beers would compress to a point where the angle between the fold edges is in the range of 10° to 30°. Further, Applicant has provided no specific criticality or reasoning for the particular range claimed, and discloses much larger ranges in the specification in paragraph 49 (“The first fold edge 21 and the second fold edge 22 form an interior angle of α, α=0-90°. Preferably, 10°≤α≤30°, and more preferably, α=20°.”).
Regarding claim 6, Beers as modified discloses: The heel counter structure with the rebound function according to claim 1, wherein a center point A of the heel counter body, a first edge point B on a left side of the heel counter body, and a second edge point C on a right side of the heel counter body form an angle CAB; and the angle CAB is defined as µ, 20°≤µ≤60° (as can be seen in figures 68 and 69 of Beers, the heel counter body extends in an arc shape around the heel; therefore, a point B and point C on the left and right of the heel counter body can be defined such that they form an angle with a center point A of the heel counter body that is between 20 and 60 degrees; Examiner notes that no further parameters for the first edge point and second edge point besides that they are on the left and right sides, so these points can be defined at any point along their respective side; for example, figure 84 is annotated below to show an example of how the three points could potentially be defined such that the angle is 60 degrees, but it is noted that the claim as written is extremely broad and the points can be defined in many ways other than the particular example shown).
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Regarding claim 8 (and claim 12 as best understood by Examiner, see 35 USC 112(b) rejection of claim 12 above), Beers as modified discloses: The heel counter structure with the rebound function according to claim 1, wherein the heel counter body further comprises at least one buffer cavity (see figure 71A of Beers, the buffer cavities can be defined on the interior side of each of the ridges 2881); each buffer cavity is located between adjacent two of the protrusion structures (see figure 71A); and a buffer direction of the buffer cavity is the same as a compression contraction direction of the protrusion structures, and a recovery direction of the buffer cavity is the same as a rebound recovery direction of the protrusion structures (see figure 71A (relaxed) compared to figure 71B (compressed); the buffer cavities get smaller as the protrusion structures compress, and get larger as the protrusion structures rebound to the relaxed position, therefore they have the same buffer direction/compression direction and rebound recovery direction as the protrusion structures).
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Regarding claim 9 (and claim 18 as best understood by Examiner, see 35 USC 112(b) rejection of claim 18 above), Beers as modified discloses: A shoe, comprising an upper portion (38), a sole portion (2632), and a heel counter body, wherein the heel counter body is the heel counter structure with the rebound function according to claim 1 (see 35 USC 103 rejection of claim 1 above for the heel counter body); the upper portion is connected to an upper surface of the sole portion (see figure 68 showing the upper portion connected to an upper surface of the sole portion); the heel counter body comprises a side end connected to a side end of the upper portion (see figure 68 showing the side of the heel counter body connected to the side of the upper) and a bottom end connected to the upper surface of the sole portion (see figure 68 showing the upper portion connected to an upper surface of the sole portion; “The sole structure 2632 is secured to the lower flange 2822 by adhesive, thermal bonding, or otherwise, so that the sole structure 2632 generally underlies the upper 38 and the heel spring device 2810 as shown in FIG. 68” paragraph 248); and the heel counter body is located at a back end of the upper portion (see figure 68, the heel counter body is at the back end of the upper).
Regarding claim 10, Beers as presently modified does not explicitly disclose: The shoe according to claim 9, wherein a surface of the heel counter body is wrapped with an outer covering.
However, Beers teaches a different embodiment in which “the heel spring device 710 is embedded in a flexible covering of an upper” (paragraph 190). See figure 17 and 18.
Beers teaches analogous art to the instant application in the field of heel counters for footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to embed the heel counter in a flexible covering of the upper, as taught by Beers, in order to create a smooth, clean, and aesthetically pleasing appearance on the outside of the shoe as well as to protect the heel counter from the elements so it is less likely to be damaged when the shoe is used in dirty or wet environments.
Regarding claim 11, Beers as modified discloses: The heel counter structure with the rebound function according to claim 2, wherein each of the protrusion structures comprises at least one first fold edge and at least one second fold edge obliquely connected to the first fold edge; and the first fold edge and the second fold edge form an interior angle of α, and α is in a range of 10° to 30° (see annotated figure 71B provided with the 35 USC 103 rejection of claim 3 above showing the first fold edge and second fold edge and how the interior angle appears to be 30°).
However, assuming arguendo that the figure provided with the 35 USC 103 rejection of claim 3 above is not an explicit teaching of the interior angle being in the range of 10° to 30°, it further would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application for the angle between the fold edges to be in the range of 10° to 30° as it is described in paragraph 245 of Beers that “In the loaded position, the corrugated body 2815 compresses (e.g., by folding) so that adjacent ones of the alternating ridges 2881 are closer to one another than in the unloaded position, particularly at the center segment 2816, storing elastic energy that returns the corrugated body 2815 to the unloaded position upon removal of the applied force F.”. Therefore, the angle between the fold edges is a result-effective variable that depends on the amount of force applied to the heel counter body. One of ordinary skill in the art would understand that, given the right amount of force, the corrugated body of Beers would compress to a point where the angle between the fold edges is in the range of 10° to 30°. Further, Applicant has provided no specific criticality or reasoning for the particular range claimed, and discloses much larger ranges in the specification in paragraph 49 (“The first fold edge 21 and the second fold edge 22 form an interior angle of α, α=0-90°. Preferably, 10°≤α≤30°, and more preferably, α=20°.”).
Regarding claim 13, Beers as modified discloses: The shoe of claim 9, wherein the protrusion structures protrude outward from an outer side of the heel counter body (see annotated figure 68 of Beers provided with the 35 USC 103 rejection of claim 1 above; the body 2815 is also described as corrugated in paragraph 245 and shown in figure 71A, so it is understood to have the claimed structure insofar as can be determined; Examiner notes that the other limitations in this claim are alternatives so only one of the three limitations must be met in order to read on the claim, so the other limitations in this claim are not required because the first limitation has been met by the prior art); or a left side end and a right side end of each of the protrusion structures extends to an edge of the heel counter body; or a thickness H1 of each of the protrusion structures oriented towards the edge and a thickness H2 of each of the protrusion structures oriented towards a centerline of the heel counter body satisfy a following relational expression: H2>H1.
Regarding claim 14, Beers as modified discloses: The shoe of claim 9, wherein each of the protrusion structures comprises at least one first fold edge and at least one second fold edge obliquely connected to the first fold edge; and the first fold edge and the second fold edge form an interior angle of α, and α is in a range of 10° to 30° (see annotated figure 71B provided with the 35 USC 103 rejection of claim 3 above showing the first fold edge and second fold edge and how the interior angle appears to be 30°).
However, assuming arguendo that the figure provided with the 35 USC 103 rejection of claim 3 above is not an explicit teaching of the interior angle being in the range of 10° to 30°, it further would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application for the angle between the fold edges to be in the range of 10° to 30° as it is described in paragraph 245 of Beers that “In the loaded position, the corrugated body 2815 compresses (e.g., by folding) so that adjacent ones of the alternating ridges 2881 are closer to one another than in the unloaded position, particularly at the center segment 2816, storing elastic energy that returns the corrugated body 2815 to the unloaded position upon removal of the applied force F.”. Therefore, the angle between the fold edges is a result-effective variable that depends on the amount of force applied to the heel counter body. One of ordinary skill in the art would understand that, given the right amount of force, the corrugated body of Beers would compress to a point where the angle between the fold edges is in the range of 10° to 30°. Further, Applicant has provided no specific criticality or reasoning for the particular range claimed, and discloses much larger ranges in the specification in paragraph 49 (“The first fold edge 21 and the second fold edge 22 form an interior angle of α, α=0-90°. Preferably, 10°≤α≤30°, and more preferably, α=20°.”).
Regarding claim 17, Beers as modified discloses: The shoe of claim 9, wherein a center point A of the heel counter body, a first edge point B on a left side of the heel counter body, and a second edge point C on a right side of the heel counter body form an angle CAB; and the angle CAB is defined as µ, 20°≤µ≤60° (as can be seen in figures 68 and 69 of Beers, the heel counter body extends in an arc shape around the heel; therefore, a point B and point C on the left and right of the heel counter body can be defined such that they form an angle with a center point A of the heel counter body that is between 20 and 60 degrees; Examiner notes that no further parameters for the first edge point and second edge point besides that they are on the left and right sides, so these points can be defined at any point along their respective side; for example, figure 84 is annotated with the 35 USC 103 rejection of claim 6 above to show an example of how the three points could potentially be defined such that the angle is 60 degrees, but it is noted that the claim as written is extremely broad and the points can be defined in many ways other than the particular example shown).
Regarding claim 19, Beers as modified discloses: The shoe of claim 9, wherein the heel counter body further comprises at least one buffer cavity (see figure 71A of Beers annotated with the 35 USC 103 rejection of claim 8 above, the buffer cavities can be defined on the interior side of each of the ridges 2881); each buffer cavity is located between adjacent two of the protrusion structures (see figure 71A); and a buffer direction of the buffer cavity is the same as a compression contraction direction of the protrusion structures, and a recovery direction of the buffer cavity is the same as a rebound recovery direction of the protrusion structures (see figure 71A (relaxed) compared to figure 71B (compressed); the buffer cavities get smaller as the protrusion structures compress, and get larger as the protrusion structures rebound to the relaxed position, therefore they have the same buffer direction/compression direction and rebound recovery direction as the protrusion structures).
Claim(s) 4-5, 15-16, as best as can be understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Beers/Wang as applied to claims 1 and 9 above, and further in view of Weeks (US 2023/0284748).
Regarding claim 4 as best understood by Examiner, Beers as modified discloses: The heel counter structure with the rebound function according to claim 1, wherein in a side view of the heel counter structure, the guide surface comprises a guide section and a support section connected to the guide section (see annotated figure 69 of Beers below); the support section is connected to the movable portion (see annotated figure 69 of Beers below); and the support section is arc-shaped from top to bottom in a side view of the heel counter structure (see annotated figure 69 of Beers below; the entire support section (i.e., from top to bottom) is arc-shaped as it follows the arc around the back of a user’s heel).
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Given the interpretation that the angle β is defined as described in claim 5 (see 35 USC 112(b) rejection of this claim above), Beers as modified does not explicitly disclose: the guide section is inclined upward and rearward at an angle of β relative to the vertical direction.
However, Weeks teaches a heel counter body with a guide section wherein a tangent line of an inner side of the guide section and a horizontal plane where the guide section is located form an angle β, and β is in a range of 40° to 85° (The top portion of the convex curvature has the downward incline A1 of 30 degrees” paragraph 41; see annotated figure 6B of Weeks below showing that the downward incline angle is related to the claimed angle beta geometrically such that if the downward inline angle is 30, the angle beta will be 60 because together the downward incline angle A1 and the angle beta add up to 90 degrees; 60 is between 40 and 85).
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Weeks teaches analogous art to the instant application in the field of footwear with heel counters. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to make the heel counter of Beers such that a tangent line of an inner side of the guide section and a horizontal plane where the guide section is located form an angle of β, and β is specifically 60°, as taught by Weeks, which is in a range of 40° to 85°, because the specific “angle of the downward incline of the upper portion allows the heel of the foot to slide into the shoe 12 with greater ease” (Weeks, paragraph 52), which would make it even easier to put the shoe on, especially for people who have limited flexibility or mobility. Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to make the guide section with the claimed angle because a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47. See MPEP 2144.04.
Regarding claim 5, Beers as modified discloses: The heel counter structure with the rebound function according to claim 4, wherein a tangent line of an inner side of the guide section and a horizontal plane where the guide section is located form the angle of β, and β is in a range of 40° to 85° (as modified by Weeks, the angle β is 60°; Examiner notes that the other limitations in this claim are alternatives so only one of the three limitations must be met in order to read on the claim, so the other limitations in this claim are not required because the first limitation has been met by the prior art); or a thickness D1 of the support section oriented towards the guide section and a thickness D2 of the support section oriented towards the movable portion satisfy a following relational expression: D2>D1; or a tangent line of an inner side of the support section and a vertical plane where the support section is located form an angle of δ, and δ is in a range of 10° to 30°.
Regarding claim 15, Beers as modified discloses: The shoe of claim 9, wherein in a side view of the heel counter structure, the guide surface comprises a guide section and a support section connected to the guide section (see annotated figure 69 of Beers provided with the 35 USC 103 rejection of claim 4 above); the support section is connected to the movable portion (see annotated figure 69 of Beers provided with the 35 USC 103 rejection of claim 4 above); and the support section is arc-shaped from top to bottom in a side view of the heel counter structure (see annotated figure 69 of Beers provided with the 35 USC 103 rejection of claim 4 above; the entire support section (i.e., from top to bottom) is arc-shaped as it follows the arc around the back of a user’s heel).
Given the interpretation that the angle β is defined as described in claim 16 (see 35 USC 112(b) rejection of this claim above), Beers as modified does not explicitly disclose: the guide section is inclined upward and rearward at an angle of β relative to the vertical direction.
However, Weeks teaches a heel counter body with a guide section wherein a tangent line of an inner side of the guide section and a horizontal plane where the guide section is located form an angle β, and β is in a range of 40° to 85° (The top portion of the convex curvature has the downward incline A1 of 30 degrees” paragraph 41; see annotated figure 6B of Weeks provided with the 35 USC 103 rejection of claim 4 above showing that the downward incline angle is related to the claimed angle beta geometrically such that if the downward inline angle is 30, the angle beta will be 60 because together the downward incline angle A1 and the angle beta add up to 90 degrees; 60 is between 40 and 85).
Weeks teaches analogous art to the instant application in the field of footwear with heel counters. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to make the heel counter of Beers such that a tangent line of an inner side of the guide section and a horizontal plane where the guide section is located form an angle of β, and β is specifically 60°, as taught by Weeks, which is in a range of 40° to 85°, because the specific “angle of the downward incline of the upper portion allows the heel of the foot to slide into the shoe 12 with greater ease” (Weeks, paragraph 52), which would make it even easier to put the shoe on, especially for people who have limited flexibility or mobility. Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to make the guide section with the claimed angle because a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47. See MPEP 2144.04.
Regarding claim 16, Beers as modified discloses: The shoe of claim 15, wherein a tangent line of an inner side of the guide section and a horizontal plane where the guide section is located form the angle of β, and β is in a range of 40° to 85° (as modified by Weeks, the angle β is 60°; Examiner notes that the other limitations in this claim are alternatives so only one of the three limitations must be met in order to read on the claim, so the other limitations in this claim are not required because the first limitation has been met by the prior art); or a thickness D1 of the support section oriented towards the guide section and a thickness D2 of the support section oriented towards the movable portion satisfy a following relational expression: D2>D1; or a tangent line of an inner side of the support section and a vertical plane where the support section is located form an angle of δ, and δ is in a range of 10° to 30°.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Beers (US 2018/0110292) and Beers (US 11707111) teach relevant heel counters.
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 BRIANNA T DUCKWORTH whose telephone number is (571)272-1458. The examiner can normally be reached M-F 9:00 am - 5:00 pm.
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/BRIANNA T. DUCKWORTH/Examiner, Art Unit 3732
/JAMESON D COLLIER/Primary Examiner, Art Unit 3732
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