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 .
Election/Restrictions
Applicant’s election without traverse of Species A (claims 1-20 indicated as readable thereon by Applicant) in the reply filed on November 19, 2025 is acknowledged. An action on the merits is to follow regarding claims 1-20.
Specification
The disclosure is objected to because of the following informalities: in ¶ 00135, 00200 and 00225 of the Specification, Applicant recites the term “interfits”, which has no English definition. Given the context used in the disclosure, however, it appears that the intended meaning is the same as “matingly fits” and Examiner suggests changing “interfits” to “matingly fits” for improved clarity and understanding.
Appropriate correction is required.
Claim Objections
Claims 1 and 5 are objected to because of the following informalities:
Claim 1, line 12: before “the lateral side arm”, it would be clearer if the comma were deleted and replaced with “and”
Claim 1, line 14: the term “interfits” does not have an English definition; given the context of the disclosure, however, it appears that the intended meaning is the same as “matingly fits” and Examiner suggests changing “interfits” to “matingly fits” for improved clarity
Claim 5, line 3: before “storing” it would be clearer if the word “thus” were added
Appropriate correction is required.
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 4, 11 and 20 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 4, Applicant recites “wherein the medial side arm and the lateral side arm are not fixed to the upper” (emphasis added). This language is confusing because all elements of the article of footwear are fixed to one another, at least via intermediate structure, if not directly fixed together. Correction is required. Examiner suggests “wherein the medial side arm and the lateral side arm are not directly fixed to the upper”.
Regarding claim 11, Applicant recites “wherein an inflated portion of the bladder and the first outsole component are arcuate”. This language is unclear because “an inflated portion of the” could be interpreted as belonging to both the bladder and the first outsole component. Correction is required. Examiner suggests “wherein an inflated portion of the bladder is arcuate and the first outsole component is arcuate”.
Regarding claim 20, Applicant recites “wherein the sole structure is characterized by an absence of a heel counter between the center segment and the base”. First, it is unclear how the sole structure, which is not disposed between the center segment and the base, would be characterized by an absence of a heel counter, instead of the upper, which is located in the space between the center segment and the base. Second, the phrase “is characterized by” itself is somewhat confusing, structurally. Correction is required. For purposes of examination, the claim is being interpreted as “wherein the upper lacks a heel counter between the center segment and the base”, as best as can be understood.
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 1-5, 10, 11 and 16-20 (claims 4, 11 and 20 as best as can be understood) are rejected under 35 U.S.C. 103 as being unpatentable over Beers et al. (hereinafter “Beers”) (US 2018/0289109) in view of Eldem et al. (hereinafter “Eldem”) (US 2020/0077742).
Regarding independent claim 1, Beers discloses an article of footwear (#12; Figs. 5-6 embodiment) comprising: an upper (#38); a sole structure (#32) secured to and underlying the upper (see Figs. 5-6); and a device (#10; Figs. 1-6) including: a control bar (#14) having a center segment (#16; Examiner notes that the term "segment" is very broad and merely means "one of the parts into which something is divided; a division, portion, or section". (Defn. No. 1 of "Random House Kernerman Webster's College Dictionary" entry via TheFreeDictionary.com)), a medial side arm (#18) extending downwardly and forwardly from the center segment (as shown in Figs. 1-6), and a lateral side arm (#20) spaced from the medial side arm and extending downwardly and forwardly from the center segment (as shown in Figs. 1-6); and a base (#22) underlying the control bar and connected to the medial side arm at a first joint (#24A; Fig. 6) and to the lateral side arm at a second joint (#24B; Fig. 5); wherein the control bar and the base are configured to surround a rear of the upper with the medial side arm at a medial side of the upper [and] the lateral side arm at a lateral side of the upper (as shown in Figs. 3-6); wherein the sole structure has a convex upper surface (see annotated Fig. 4 below, which shows that the sole structure has an upper surface (i.e. relative to a lower surface) that is convex at least to some degree), and the base has a concave lower surface that interfits [i.e. matingly fits; see the Claim Objection section above] with and is secured to the convex upper surface of the sole structure (see annotated Fig. 4 below; since the base #22 matingly fits the convexly-curved upper surface of the sole, then the lower surface of the base #22 itself would be at least concave to some degree).
Beers is silent as to whether the sole structure includes a bladder defining an interior cavity and configured to retain a fluid in the interior cavity.
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Eldem discloses a shoe with a sole structure that includes a bladder (#210; ¶ 0037-0038) that defines an interior cavity and is configured to retain a fluid therein (¶ 0038 of Eldem). The sole structure includes the equivalent of a midsole element (outer sole member #230) and outsole elements (traction elements #204, along with overmold portion #220), wherein the midsole is partially disposed above and forward of the bladder (see Figs. 2, 4, 5 and 8 of Eldem).
Beers and Eldem teach analogous inventions in the field of footwear soles. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have used the sole structure of Eldem as a sole structure of choice for the sole structure in the footwear of Beers in order to provide a known type of cushioning elements for enhancing the comfort of the wearer during use. As a result of the modification, the sole structure would include a bladder defining an interior cavity and configured to retain a fluid in the interior cavity, wherein the bladder has a convex upper surface (see Fig. 2 of Eldem, which shows the shape of the upper surface of the bladder #210), and the base has a concave lower surface that matingly fits with and is secured to the convex upper surface of the bladder.
Regarding claim 2, the modified footwear article of Beers (i.e. Beers in view of Eldem, as applied to independent claim 1, above) renders obvious all the limitations of claim 1, as set forth above, and further that the concave lower surface of the base has an inner edge (in annotated Fig. 4 above, generally where the upper added arrow is pointing in base #22 is an inner edge, as there is a subtle bend where the sole structure meets the inner surface of the base #22) and an outer edge (lowermost edge of the base #22 is an outer edge) and is concave in a transverse direction of the device (Fig. 4 shows a transverse cross section, which has concavity for the base’s #22 outer surface) with the outer edge lower than the inner edge (the identified outer edge is disposed lower than the identified inner edge). Beers does not clearly show that, in a longitudinal direction of the device from the inner edge to the outer edge of the base (at least in the embodiment of Figs. 1-6), there is explicit concavity. However, since the incorporated bladder sole structure from Eldem has an outwardly-convex shape, onto and around which the base would be applied, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art for the base to have been concave in a longitudinal direction of the device from the inner edge to the outer edge in order for the base to have a closely mating abutment with the convexity of the bladder around the medial and lateral sides from the rear direction.
Regarding claim 3, the modified footwear article of Beers (i.e. Beers in view of Eldem, as applied to independent claim 1, above) renders obvious all the limitations of claim 1, as set forth above, and further that the center segment of the control bar has a thinned portion (#45; Figs. 1-4; 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 the upper is stitched to the control bar at the thinned portion (see end of ¶ 0074 of Beers).
Regarding claim 4, the modified footwear article of Beers (i.e. Beers in view of Eldem, as applied to independent claim 1, above) renders obvious all the limitations of claim 1, as set forth above, and further that the medial side arm and the lateral side arm are not [directly] fixed to the upper (since the device is affixed at the stitching of the thinned portion #45 of the control bar of the device, then the medial and side arms are not directly affixed to the upper).
Regarding claim 5, the modified footwear article of Beers (i.e. Beers in view of Eldem, as applied to independent claim 1, above) renders obvious all the limitations of claim 1, as set forth above, and further that the medial side arm and the lateral side arm are adapted to resiliently bend to a loaded position when a downward force is applied to the center segment of the control bar (as discussed in ¶ 0042, 0059, 0060, 0076 of Beers), [thus] storing potential energy that returns the control bar to an unloaded position upon removal of the downward force (as discussed in ¶ 0059 of Beers).
Regarding claim 10, the modified footwear article of Beers (i.e. Beers in view of Eldem, as applied to independent claim 1, above) renders obvious all the limitations of claim 1, as set forth above, and further that the sole structure includes: a midsole secured to an upper surface of the bladder and extending forward of the base (see outer sole member #230 in Eldem (Fig. 8 of Eldem), which is secured to an upper surface of the bladder and would extend forward of the base in the modified footwear article of Beers); a first outsole component (#204b on either of the medial or lateral sides is a first outsole component; Examiner notes that the term component" is very broad and merely means "a constituent part; element; ingredient". (Noun defn. No. 1 of "Random House Kernerman Webster's College Dictionary" entry via TheFreeDictionary.com)), secured to a bottom surface of the bladder (see Fig. 3A, which shows a bottom view of the sole, wherein #204b is on a bottom surface of bladder #210); and a second outsole component (for one example, #204g is a second outsole component) secured to the bladder inward of the first outsole component (all elements of the footwear are “secured to” one another, at least through intermediate structure if not directly secured together) and secured to a bottom surface of the midsole forward of the bladder (#204g is forward of the bladder in Fig. 3A; as noted above, all elements of the footwear are secured together, at least through intermediate structure if not directly secured together).
Regarding claim 11, the modified footwear article of Beers (i.e. Beers in view of Eldem, as applied to claims 1 and 10, above) renders obvious all the limitations of claims 1 and 10, as set forth above, and further that an inflated portion of the bladder and the first outsole component are arcuate (Figs. 4, 5 and 8 show an inflated portion in #213 to have an arcuate shape; Fig. 3A shows the that #204b (i.e. first outsole component) is “D” shaped, with an arcuate front edge/face).
Regarding claim 16, the modified footwear article of Beers (i.e. Beers in view of Eldem, as applied to independent claim 1, above) renders obvious all the limitations of claim 1, as set forth above, and further that the sole structure further includes a midsole (outer sole member #230 incorporated into Beers from Eldem, as noted above in the 35 U.S.C. 103 rejection of claim 10) secured to an upper surface of the bladder (as noted above in the 35 U.S.C. 103 rejection of claim 10) and extending rearwardly and transversely inward of the base to a rear portion of the base (see Fig. 8 of Eldem, which shows the extent of the sole structure that has been incorporated into the modified footwear article of Beers, wherein the rear extent of the member #230 (i.e. midsole) extends rearwardly and transversely inward of where the base would be wrapped around the horse-shoe shape bladder and to a rear portion thereof).
Regarding claim 17, the modified footwear article of Beers (i.e. Beers in view of Eldem, as applied to claims 1 and 16, above) renders obvious all the limitations of claims 1 and 16, as set forth above, and further that the midsole further extends forward of the base (as noted above in the 35 U.S.C. 103 rejection of claim 10).
Regarding claim 18, the modified footwear article of Beers (i.e. Beers in view of Eldem, as applied to independent claim 1, above) renders obvious all the limitations of claim 1, as set forth above, and further that the device is a single, unitary, one-piece component (first sentence of ¶ 0061 and last two sentences of ¶ 0071 of Beers).
Regarding claim 19, the modified footwear article of Beers (i.e. Beers in view of Eldem, as applied to independent claim 1, above) renders obvious all the limitations of claim 1, as set forth above. The embodiment in Figs. 1-6 relied upon above, in Beers, is silent to the base having: a medial side projection extending transversely outwardly from a medial side of the base rearward of the first joint; and/or a lateral side projection extending transversely outwardly from a lateral side of the base rearward of the second joint; and/or a rear projection extending rearwardly from a rear of the base. However, Beers teaches that a different embodiment (see Figs. 30-34 of Beers) has a base that has a rear projection (rear protrusion #3582) extending rearwardly from a rear of the base (see Figs. 30-34 of Beers). It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have added the rear protrusion of the Fig. 30-34 embodiment to the Fig. 1-6 embodiment of Beers in order to provide an improvement that would enable the user to use the opposite foot to assist in keeping the footwear open when removing the shoe, as taught by Beers. As a result of the modification, the base would have a rear projection extending rearwardly from a rear of the base (i.e. the three clauses in claim 19 are all part of an overall “or” statement, since each clause is connected with the term “and/or”; therefore, only one of the three clauses is required to meet the limitations of the claim).
Regarding claim 20, the modified footwear article of Beers (i.e. Beers in view of Eldem, as applied to independent claim 1, above) renders obvious all the limitations of claim 1, as set forth above, and further that the sole structure is characterized by an absence of a heel counter between the center segment and the base (as best as this limitation can be understood, there is no heel counter between the center segment and the base of the device in the upper of the footwear article; see Fig. 4 of Beers, wherein #38 is the upper as a single layer).
Claims 6-9 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Beers in view of Eldem as applied to claim 1 above, and further in view of Richter et al. (hereinafter “Richter”) (DE 10247163 A1; please refer to the English machine translation document provided herewith).
Examiner notes that, since claims 6 and 8 essentially recite the same subject matter mirrored from one another (just regarding the medial side and the lateral sides of the device) these claims will be addressed together, since the same modification explained hereinafter would address both the medial and lateral sides of the device’s structure.
Regarding claims 6 and 8, the modified footwear article of Beers (i.e. Beers in view of Eldem, as applied to independent claim 1, above) renders obvious all the limitations of claim 1, as set forth above, and further discloses that the upper and the sole structure define a foot-receiving void (#47), but does not teach that the device includes a medial anchor arm extending downwardly and forwardly from the first joint and adapted to be positioned partially under the foot-receiving void (claim 6), and likewise does not teach that the device includes a lateral anchor arm extending downwardly and forwardly from the second joint and adapted to be positioned partially under the foot-receiving void (claim 8).
Richter teaches a device for assisting in shoe donning that includes a medial anchor arm extending downwardly and forwardly from a joint and adapted to be partially under the foot-receiving void and a lateral anchor arm extending downwardly and forwardly from a joint and adapted to be partially under the foot-receiving void (see annotated Fig. 4 of Richter below, which identifies anchor arms (i.e. T-shaped sections that include legs #2 and a center extension therefrom), wherein the arms are disposed forwardly and at least partially downwardly from the joints, Figs. 3-4 of Richter).
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Modified Beers and Richter teach analogous inventions in the field of devices for assisting in the donning of shoes. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have added the anchor arms of Richter to the device #10 of Beers in order to further secure the device to the sole and remainder of the shoe, especially since Beers discloses already that the ends of the side arms can be anchored to the sole structure (¶ 0043 of Beers). As a result of the modification, there would be a medial anchor arm extending downwardly and forwardly from the first joint and adapted to be positioned partially under the foot-receiving void, as well as a lateral anchor arm extending downwardly and forwardly from the second joint and adapted to be positioned partially under the foot-receiving void, as explained above.
Examiner notes that, since claims 7 and 9 essentially recite the same subject matter mirrored from one another (just regarding the medial side and the lateral sides of the device) these claims will be addressed together, since the same modification explained hereinafter would address both the medial and lateral sides of the device’s structure.
Regarding claims 7 and 9, the modified footwear article of Beers (i.e. Beers in view of Eldem and Richter, as applied to claims 6 and 8, respectively, above) renders obvious all the limitations of claims 6 and 8, respectively, as set forth above. Modified Beers teaches that the bladder has a convex front surface at a medial side of the bladder (claim 7) and at a lateral side of the bladder (claim 9) (see Fig. 2 of Eldem, which shows a shape of the front surface of the bladder #210; while Fig. 2 shows a seam #214, Eldem discloses that the seam #214 could be a flat seam such that the upper and lower barrier layers that define the bladder are substantially continuous with each other (i.e. relatively flush at the junction), which indicates that the front surface of the bladder #210 would be convex with such a flat seam), and teaches that the medial anchor arm (claim 7) and the lateral anchor arm (claim 9) have a concave rear surface (there is concavity between the rear-extending branch and the vertical-oriented extension of the anchor arms incorporated from Richter into the device of Beers), but does not explicitly teach that the convex front surfaces at the medial and lateral sides of the bladder are nested in the concave rear surfaces of the medial and lateral anchor arms, respectively. However, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art for the convex front surfaces of the bladder’s medial and lateral sides to have been nested into the aforementioned concave rear surfaces of the medial and lateral anchor arms in order to take advantage of an existing junction point between elements of the sole when manufacturing the shoe (i.e. there are already existing medial and lateral junctions in the sole structure between the bladder’s medial and lateral front convex surfaces and the sole material immediately forward thereof), wherein the resulting structure would include the front surface of the bladder (on the medial and lateral sides thereof) nesting into the concavity of the medial and lateral anchor arms, upon completion of the shoe.
Regarding claim 12, the modified footwear article of Beers (i.e. Beers in view of Eldem and Richter, as such modification is explained above with respect to claims 6 and 8) renders obvious all the limitations of claim 1, and that the device includes a medial anchor arm extending downwardly and forwardly from the first joint; the device includes a lateral anchor arm extending downwardly and forwardly from the second joint (as taught by Richter and incorporated into the modified footwear article of Beers, as explained above); and the sole structure further includes an outsole component secured to a bottom surface of the bladder rearward of the medial anchor arm and the lateral anchor arm (see elements #204a/b, which collectively define an outsole component that would be rearward of both of the medial and lateral arms).
Regarding claim 13, the modified footwear article of Beers (i.e. Beers in view of Eldem and Richter, as such modification is explained above with respect to claims 6 and 8) renders obvious all the limitations of claim 12, as set forth above, and that the outsole component is further secured to a bottom surface of the medial anchor arm and a bottom surface of the lateral anchor arm forward of the bladder (the outsole component further includes elements #204d/c, all of which are secured to a bottom surface of the medial and lateral anchor arms forward of the bladder (as noted above, all elements of the footwear article are secured to one another, at least through intermediate structure if not directly secured)).
Regarding claim 14, the modified footwear article of Beers (i.e. Beers in view of Eldem and Richter, as such modification is explained above with respect to claims 6 and 8) renders obvious all the limitations of claim 13, as set forth above, and that the outsole component is a first outsole component, and the sole structure further includes: a midsole secured to an upper surface of the bladder and extending forward of the base (as taught by Eldem and incorporated into Beers, as explained above); and a second outsole component (element #204g) secured to the bladder inward of the first outsole component and secured to a bottom surface of the midsole forward of the bladder (see Fig. 3A of Eldem).
Regarding claim 15, the modified footwear article of Beers (i.e. Beers in view of Eldem and Richter, as such modification is explained above with respect to claims 6 and 8) renders obvious all the limitations of claim 14, as set forth above, and that the second outsole component is secured to an uninflated portion of the bladder (as noted above, all elements of the footwear article are secured to one another, at least through intermediate structure if not directly secured; there is an uninflated portion of the bladder at web area #216; Fig. 8 of Eldem).
Examiner’s Comment
Examiner notes that the issued patent (USPN 12,336,590) for the parent application 18/176,817 was reviewed for a potential obviousness-type double patenting rejection. However, the subject matter in the last clause of the present application’s independent claim 1 (“wherein the bladder has a convex upper surface, and the base has a concave lower surface that interfits with and is secured to the convex upper surface of the bladder”) is not recited in any of the allowed claims in the ‘590 patent and independent claim 1 would be patentably distinct from all of the claims of the ‘590 patent. Therefore, an obviousness-type double patenting rejection is not deemed appropriate and has not been applied.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All art cited on the PTO-892 and not relied upon in an art rejection above is deemed relevant in the field of shoes with devices for assisting with donning the shoe.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMESON COLLIER whose telephone number is (571)270-5221. The examiner can normally be reached Monday - Friday 8 am - 5 pm.
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/JAMESON D COLLIER/Primary Examiner, Art Unit 3732