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 E (citing claims 1-20 as encompassing the elected species) in the reply filed on January 8, 2026 is acknowledged. An action on the merits follows regarding claims 1-20.
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 subject matter of claim 14 (“wherein a minimum width of the second split is greater than a minimum width of the first split”) must be shown or the feature(s) canceled from the claim(s). Elected Fig. 23 shows a perspective view of the exploded sole structure. The first and second splits, as best as can be seen, have a minimum width that is essentially infinitesimally small and approaching zero, since the split in the front and back of the plate appears to converge to a point near the transverse center of the plate. Therefore, the drawings do not clearly show that the second split’s minimum width is greater than the first split’s minimum width, as best as this limitation can be understood, since the minimum widths of the splits appears to be equivalent. No new matter should be entered.
The drawings are objected to because Figs. 4 and 5 include reference numerals shared among the figures on the page (108, 110, 112 are marked in between the figures, but each figure relies on the same numerals on the page, which is improper). Each figure should include reference numerals and leading lines/brackets/braces that are assigned to each figure themselves.
The drawings are objected to because Figs. 37 and 38 are exploded views with no associated bracket that surrounds the constituent parts of the exploded devices.
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.
Specification
The disclosure is objected to because of the following informalities: claims 1, 11 and 16 all recite “a forward outsole portion positioned within the forefoot region of the sole structure, the midfoot region of the sole structure, or both”. Examiner acknowledges that Applicant’s Specification recites this language in ¶ 0023, 0025 and 0027. However, in the paragraph that is explicitly describing Fig. 23 (i.e. the elected species), ¶ 00131 recites “a first outsole portion 642 positioned within the forefoot region of the sole structure 600”. Examiner suggests ¶ 00131 be amended to clarify that the first outsole portion be positioned “within the forefoot region of the sole structure, the midfoot region of the sole structure, or both” in order to match the claim language.
Appropriate correction is required.
The disclosure is objected to because of the following informalities: in ¶ 0018 (see partial screenshot below), there are two misspellings of the word “degrees”, being spelled as “degress”:
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Appropriate correction is required.
The use of a trade term, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be fully capitalized wherever it appears and, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term. The following trade names have been noted, and Examiner suggests amending each as noted below:
Velcro® (¶ 0079) should recite “VELCRO®”
PEBAX® (¶ 0092) should include the generic terminology: “PEBAX® (a type of polyether block amide copolymer)”
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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, 11 and 16 (and claims 2-10, 12-15 and 17-20 at least due to dependency from either of independent claims 1, 11 or 16) 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 each of claims 1, 11 and 16, Applicant recites “a forward outsole portion positioned within the forefoot region of the sole structure, the midfoot region of the sole structure, or both” (emphasis added). The phrase “or both” appears to be missing clarifying language thereafter, such as “or both of the forefoot region of the sole structure and the midfoot region of the sole structure”. Correction is required. Examiner alternatively suggests simplifying the language to recite, in each claim: “a forward outsole portion positioned within the forefoot region of the sole structure and/or the midfoot region of the sole structure”, wherein “and/or” establishes that the forward outsole portion could be in either of (or both of) the forefoot region and the midfoot region.
Similarly as above, claim 8 recites “wherein the cavity of the midsole cushioning member is disposed within the midfoot region of the sole structure, the heel region of the sole structure, or both”. Correction is required. Examiner suggests “wherein the cavity of the midsole cushioning member is disposed within the midfoot region of the sole structure and/or the heel region of the sole structure”.
Regarding claim 14, Applicant recites “wherein a minimum width of the second split is greater than a minimum width of the first split”. When interpreting this limitation in light of the disclosure (see Fig. 23), it is unclear what is actually meant because the minimum width of the splits each appears to approach zero in a similar manner, at the point where the splits reach their interior-most point longitudinally in the plate. Correction is required. For purposes of examination, this claim will be interpreted as best as can be understood when applying any prior art thereagainst. Examiner suggests Applicant consider referring to the minimum width of the toe segment and rear segment, similarly as current claim 7 recites.
Regarding claim 15, Applicant recites “wherein the surface engages a lower surface of the plate”. First, the limitation “the surface” is indefinite, because several different surfaces have been defined among the claim language of claims 11 and 15. Second, in independent claim 11, from which claim 15 depends, Applicant already positively recites that the plate has “a first surface” and “a second surface” which define a thickness therebetween, which indicates that either the first surface or the second surface would be a lower surface of the plate. It is unclear if “a lower surface” is an additional surface for the plate, or is the same as one of the first surface or the second surface that have already been positively recited in claim 11. Correction is required. Examiner suggests claim 15 recite that either of the first surface or the second surface “is a lower surface of the plate”. For purposes of examination, the claim will be interpreted as: “wherein the second surface of the plate is a lower surface of the plate, wherein the surface that projects upwardly from the top surface of the midsole cushioning member engages the second surface of the plate”.
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 1-3, 6-10, 16 and 20, as best as can be understood, are rejected under 35 U.S.C. 103 as being unpatentable over Farina et al. (hereinafter “Farina”) (US 2017/0095033) in view of Avar et al. (hereinafter “Avar”) (US 2016/0051012).
Regarding independent claim 1, Farina discloses an article of footwear (#10a; Fig. 5 of Farina), comprising: an upper (#100); and a sole structure (#200) coupled with the upper (Fig. 6 of Farina; ¶ 0099 of Farina), the sole structure defining a forefoot region, a midfoot region, and a heel region (sole structure #200 has arbitrary forefoot, midfoot and heel regions; Examiner notes that the term "region" is very broad and merely means "any large, indefinite, and continuous part of a surface or space" (Defn. No. 1 of "Collins English Dictionary – Complete and Unabridged, 12th Edition 2014" entry via TheFreeDictionary.com)), the sole structure further defining a toe end and a heel end (see Figs. 5 and 6 of Farina, which show that the sole structure #200 has a toe end and a heel end), the sole structure comprising: a midsole cushioning member (first cushioning member #250a; Figs. 5 and 6 of Farina) defining a top surface (see Figs. 5 and 6 of Farina, which show that the first cushioning member #250a has a top surface), and a cavity (see Fig. 6 of Farina; there is a cavity in the first cushioning member #250a filled with a bladder #400); an outsole coupled to a bottom surface of the midsole cushioning member (outsole #210 is affixed to the bottom surface of #250a; Fig. 5 of Farina), the outsole including: a forward outsole portion positioned within the forefoot region of the sole structure, the midfoot region of the sole structure, or both; a medial outsole portion positioned within the heel region of the sole structure; and a lateral outsole portion positioned within the heel region of the sole structure (see annotated Fig. 5 below of Farina; 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)), wherein the forward outsole portion, the medial outsole portion, and the lateral outsole portion are positioned about the cavity (the location of the midsole cushioning member’s cavity render the above-defined portions to be “about” the cavity (i.e. the cavity is generally in between the identified portions, from upper and lower viewing perspectives), inasmuch as has been defined in the claim); and a plate (#300) coupled to the top surface of the midsole cushioning member (see Figs. 5 and 6 of Farina), the plate including a first surface and a second surface opposite the first surface, and a thickness between the first surface and the second surface of the plate is substantially uniform (see Fig. 6 of Farina, which shows plate #300 to have a substantially uniform thickness between upper and lower surfaces (i.e. first and second surfaces) thereof), wherein the plate includes: a toe segment that extends through at least the forefoot region (see annotated Fig. 17 of Farina below of the plate; ¶ 0126 of Farina states that the plate of Figs. 16-18 may be incorporated into footwear article #10a; 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), the toe segment defining a first concave curved portion that extends downward from a distal end to a first inflection point disposed within the midfoot region (see annotated Fig. 17 of Farina below of the plate; first inflection point is generally located at point #320 in Fig. 17; first concave curved portion extends downwards from front end #302 to about point #320); and a middle segment defining a second concave curved portion that extends upward from the first inflection point and toward the heel region (see annotated Fig. 17 below of Farina) before transitioning to a convex curved portion at a second inflection point disposed within the midfoot region or the heel region (see annotated Fig. 17 below of Farina). Farina is silent to there being a surface that projects upwardly from the top surface of the midsole cushioning member.
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Avar teaches a shoe sole that has a midsole #200 and outsole, wherein the midsole has intersecting grooves #1006 disposed on its upper side (see Figs. 10 and 12 of Avar). In effect, the grooves’ horizontal surfaces define “a top surface” for the midsole, wherein there is a quadrilaterally-shaped section that is a surface that projects upwardly from the aforementioned groove horizontal surface (i.e. a top surface of the midsole).
Farina and Avar teach analogous inventions in the field of shoe soles with midsoles and outsoles. 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 incorporated the grooves of the midsole and outsole of Avar into the midsole and outsole of Farina in order to improve their deformation capability, for added comfort during walking, while maintaining the desired support from the plate #300 that sits atop the midsole #250a, and an additional benefit would be a slight reduction in the weight of the sole, due to less material being used (i.e. where the grooves are situated, which would be gaps in material), thus resulting in a lighter weight shoe for the user. As a result of the modification, there would be a surface that projects upwardly from the top surface of the midsole cushioning member (i.e. the quadrilaterally-shaped section defined between four intersecting points of the grooves would be a surface that projects upwardly from the grooves’ surface, which is “a top surface” of the midsole, inasmuch as the claim as required).
Regarding claim 2, the modified footwear article of Farina (i.e. Farina in view of Avar, as applied to claim 1 above) renders obvious that the toe segment of the plate includes a first split that separates the toe segment of the plate into a first toe portion and a second toe portion (see either of Fig. 27 (lateral segment #371 and medial segment #372 with split therebetween) or Fig. 30 (lateral segment #371i and medial segment #372i with split (cut-out region #380i) therebetween) of Farina, either of which can be incorporated as the plate for footwear article #10a; ¶ 0157 and 0166 of Farina).
Regarding claim 3, the modified footwear article of Farina (i.e. Farina in view of Avar, as applied to claims 1 and 2 above) renders obvious that the first toe portion is disposed on a lateral side of the plate (as noted above).
Regarding claim 6, the modified footwear article of Farina (i.e. Farina in view of Avar, as applied to claim 1 above) renders obvious that the plate includes a rear segment that extends through the heel region of the sole structure from the convex curved portion defined by the middle segment of the plate (see annotated Fig. 17 above of Farina).
Regarding claim 7, the modified footwear article of Farina (i.e. Farina in view of Avar, as applied to claims 1 and 6 above) renders obvious that a minimum width of the toe segment of the plate is larger than a minimum width of the rear segment of the plate (see Fig. 18 of Farina, which shows the front end of the toe segment would be the toe segment’s minimum width, which is larger than the narrowest part (i.e. minimum width) of the rear segment).
Regarding claim 8, the modified footwear article of Farina (i.e. Farina in view of Avar, as applied to claim 1 above) renders obvious that the cavity of the midsole cushioning member is disposed within the midfoot region of the sole structure, the heel region of the sole structure, or both (see Fig. 6 of Farina, wherein the bladder #400 (i.e. which defines the placement of the cavity) is in a heel region, or potentially both in a heel region or a midfoot region, absent any defined boundary in the claim between the heel and midfoot regions).
Regarding claim 9, the modified footwear article of Farina (i.e. Farina in view of Avar, as applied to claim 1 above) renders obvious that the toe segment of the plate is disposed at a first angle of between about 5-degrees and about 45-degrees relative to a reference plane that is parallel with respect to a resting surface when the article of footwear is disposed on the resting surface (the first angle is generally represented by α1 in Fig. 17 of Farina; ¶ 0129 discloses that α1 may be within a range of about 12 to about 35 degrees, which is within the claimed range of about 5 to about 45 degrees).
Regarding claim 10, the modified footwear article of Farina (i.e. Farina in view of Avar, as applied to claims 1 and 9 above) renders obvious that the middle segment of the plate is disposed at a second angle of between about 3-degrees and about 45-degrees relative to the reference plane (the second angle is generally represented by β1 in Fig. 17 of Farina; ¶ 0129 discloses that β1 may be within a range of about 12 to about 35 degrees, which is within the claimed range of about 3 to about 45 degrees).
Regarding independent claim 16, Farina discloses an article of footwear (#10a; Fig. 5 of Farina), comprising: an upper (#100); and a sole structure (#200) coupled with the upper (Fig. 6 of Farina; ¶ 0099 of Farina), the sole structure defining a forefoot region, a midfoot region, and a heel region (sole structure #200 has arbitrary forefoot, midfoot and heel regions; Examiner notes that the term "region" is very broad and merely means "any large, indefinite, and continuous part of a surface or space" (Defn. No. 1 of "Collins English Dictionary – Complete and Unabridged, 12th Edition 2014" entry via TheFreeDictionary.com)), the sole structure further defining a toe end and a heel end (see Figs. 5 and 6 of Farina, which show that the sole structure #200 has a toe end and a heel end), the sole structure comprising: a midsole cushioning member (first cushioning member #250a; Figs. 5 and 6 of Farina) having a top surface (see Figs. 5 and 6 of Farina, which show that the first cushioning member #250a has a top surface), and a cavity (see Fig. 6 of Farina; there is a cavity in the first cushioning member #250a filled with a bladder #400); an outsole coupled to the midsole cushioning member (outsole #210 is affixed to the bottom surface of #250a; Fig. 5 of Farina), the outsole including: a forward outsole portion positioned within the forefoot region of the sole structure, the midfoot region of the sole structure, or both; a medial outsole portion positioned within the heel region of the sole structure; and a lateral outsole portion positioned within the heel region of the sole structure (see annotated Fig. 5 above of Farina; 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)), wherein the forward outsole portion, the medial outsole portion, and the lateral outsole portion are positioned about the cavity (the location of the midsole cushioning member’s cavity render the above-defined portions to be “about” the cavity (i.e. the cavity is generally in between the identified portions, from upper and lower viewing perspectives), inasmuch as has been defined in the claim); and a plate (#300) coupled to the top surface of the midsole cushioning member (see Figs. 5 and 6 of Farina), the plate including a first surface and a second surface opposite the first surface, and a thickness between the first surface and the second surface of the plate is substantially uniform (see Fig. 6 of Farina, which shows plate #300 to have a substantially uniform thickness between upper and lower surfaces (i.e. first and second surfaces) thereof), wherein and the plate includes a first split that separates a toe segment of the plate into a first toe portion on a lateral side of the plate and a second toe portion (see annotated Fig. 17 of Farina above of the plate; ¶ 0126 of Farina states that the plate of Figs. 16-18 may be incorporated into footwear article #10a; 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; see either of Fig. 27 (lateral segment #371 and medial segment #372 with split therebetween) or Fig. 30 (lateral segment #371i and medial segment #372i with split (cut-out region #380i) therebetween) of Farina, either of which can be incorporated as the plate for footwear article #10a; ¶ 0157 and 0166 of Farina), wherein the first toe portion and the second toe portion concavely curve downward through the forefoot region from distal ends of the first toe portion and the second toe portion, respectively (see annotated Fig. 17 of Farina above of the plate; both the first and second toe portions have the concavity downward through the forefoot region from their distal ends), and wherein the plate includes a middle segment defining a first convex curved portion that extends upward through the midfoot region toward the heel region (see annotated Fig. 17 above of Farina; the middle segment’s rear portion defines a first convex curvature from the midfoot region and into the heel region). Farina is silent to there being a surface that projects upwardly from the top surface of the midsole cushioning member.
Avar teaches a shoe sole that has a midsole #200 and outsole, wherein the midsole has intersecting grooves #1006 disposed on its upper side (see Figs. 10 and 12 of Avar). In effect, the grooves’ horizontal surfaces define “a top surface” for the midsole, wherein there is a quadrilaterally-shaped section that is a surface that projects upwardly from the aforementioned groove horizontal surface (i.e. a top surface of the midsole).
Farina and Avar teach analogous inventions in the field of shoe soles with midsoles and outsoles. 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 incorporated the grooves of the midsole and outsole of Avar into the midsole and outsole of Farina in order to improve their deformation capability, for added comfort during walking, while maintaining the desired support from the plate #300 that sits atop the midsole #250a, and an additional benefit would be a slight reduction in the weight of the sole, due to less material being used (i.e. where the grooves are situated, which would be gaps in material), thus resulting in a lighter weight shoe for the user. As a result of the modification, there would be a surface that projects upwardly from the top surface of the midsole cushioning member (i.e. the quadrilaterally-shaped section defined between four intersecting points of the grooves would be a surface that projects upwardly from the grooves’ surface, which is “a top surface” of the midsole, inasmuch as the claim as required).
Regarding claim 20, the modified footwear article of Farina (i.e. Farina in view of Avar, as applied to claim 16 above) renders obvious that the sole structure further comprises a heel support collar positioned within the heel region of the sole structure (see Fig. 5 of Farina; the rear end of second cushioning member #270 defines a sidewall that wraps around the heel (¶ 0084 of Farina), to serve as a heel support collar positioned within the heel region, inasmuch as the claim has structurally defined the heel support collar).
Claims 4, 5, 11-15 and 17-19, as best as can be understood, are rejected under 35 U.S.C. 103 as being unpatentable over Farina in view of Avar (as applied to claims 3 (regarding claims 4 and 5) and 16 (regarding claims 17-19) above), and further in view of Buratto (WO 2015/145329 A1).
Regarding claim 4, the modified footwear article of Farina (i.e. Farina in view of Avar, as applied to claims 1-3 above) renders obvious all the limitations of claims 1-3, as set forth above, and teaches that the plate includes a rear segment (see annotated Fig. 17 above), but does not teach that the rear segment has a second split that separates it into a first rear portion and a second rear portion.
Buratto teaches a shoe sole with a plate insert (#10) that includes a pair of splits, one split being at the front and one split being at the rear (see Fig. 1), therefore defining a pair of front portions (front arms #20) on the medial and lateral sides, respectively, and a pair of rear portions (rear arms #30) on the medial and lateral sides, respectively. The inclusion of the arms allows the arms to flex, during the walking cycle, independently of each other (Page 4, Lines 16-18 of Buratto).
Modified Farina and Buratto teach analogous inventions in the field of shoe soles with plates. 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 split of the plate of Buratto to the plate #300 of Farina in order to allow the resulting rear arms to flex independently of one another when the user is walking in the shoe, as taught by Buratto, wherein the resulting increased flexibility in the rear segment would be consistent with Farina already teaching that its front medial and lateral segments (arms) of its plate are split apart to permit greater flexibility in the plate (¶ 0159 of Farina).
Regarding claim 5, the modified footwear article of Farina (i.e. Farina in view of Avar and Buratto, as applied to claim 4 above) renders obvious that the first rear portion is disposed on the lateral side of the plate and the second rear portion is disposed on a medial side of the plate (via the teachings of Buratto incorporated into modified Farina, the rear resulting arms would be respectively first and second rear portions that are disposed on the lateral and medial sides of the plate).
Regarding independent claim 11, Farina discloses an article of footwear (#10a; Fig. 5 of Farina), comprising: an upper (#100); and a sole structure (#200) coupled with the upper (Fig. 6 of Farina; ¶ 0099 of Farina), the sole structure defining a forefoot region, a midfoot region, and a heel region (sole structure #200 has arbitrary forefoot, midfoot and heel regions; Examiner notes that the term "region" is very broad and merely means "any large, indefinite, and continuous part of a surface or space" (Defn. No. 1 of "Collins English Dictionary – Complete and Unabridged, 12th Edition 2014" entry via TheFreeDictionary.com)), the sole structure further defining a toe end and a heel end (see Figs. 5 and 6 of Farina, which show that the sole structure #200 has a toe end and a heel end), the sole structure comprising: a midsole cushioning member (first cushioning member #250a; Figs. 5 and 6 of Farina) defining a top surface (see Figs. 5 and 6 of Farina, which show that the first cushioning member #250a has a top surface), a surface that projects upwardly from the top surface of the midsole cushioning member, and a cavity (see Fig. 6 of Farina; there is a cavity in the first cushioning member #250a filled with a bladder #400); an outsole coupled to a bottom surface of the midsole cushioning member (outsole #210 is affixed to the bottom surface of #250a; Fig. 5 of Farina), the outsole including: a forward outsole portion positioned within the forefoot region of the sole structure, the midfoot region of the sole structure, or both; a medial outsole portion positioned within the heel region of the sole structure; and a lateral outsole portion positioned within the heel region of the sole structure (see annotated Fig. 5 above of Farina; 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)), wherein the forward outsole portion, the medial outsole portion, and the lateral outsole portion are positioned about the cavity (the location of the midsole cushioning member’s cavity render the above-defined portions to be “about” the cavity (i.e. the cavity is generally in between the identified portions, from upper and lower viewing perspectives), inasmuch as has been defined in the claim); and a plate (#300) coupled to the top surface of the midsole cushioning member (see Figs. 5 and 6 of Farina), the plate including a first surface and a second surface opposite the first surface, and a thickness between the first surface and the second surface of the plate is substantially uniform (see Fig. 6 of Farina, which shows plate #300 to have a substantially uniform thickness between upper and lower surfaces (i.e. first and second surfaces) thereof), wherein the plate includes: a first split that separates a toe segment of the plate into a first toe portion and a second toe portion (see annotated Fig. 17 of Farina above of the plate; ¶ 0126 of Farina states that the plate of Figs. 16-18 may be incorporated into footwear article #10a; 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; see either of Fig. 27 (lateral segment #371 and medial segment #372 with split therebetween) or Fig. 30 (lateral segment #371i and medial segment #372i with split (cut-out region #380i) therebetween) of Farina, either of which can be incorporated as the plate for footwear article #10a; ¶ 0157 and 0166 of Farina) and teaches that the plate includes a rear segment (see annotated Fig. 17 above), but does not teach that the rear segment has a second split that separates it into a first rear portion and a second rear portion. Farina is also silent to there being a surface that projects upwardly from the top surface of the midsole cushioning member.
Avar teaches a shoe sole that has a midsole #200 and outsole, wherein the midsole has intersecting grooves #1006 disposed on its upper side (see Figs. 10 and 12 of Avar). In effect, the grooves’ horizontal surfaces define “a top surface” for the midsole, wherein there is a quadrilaterally-shaped section that is a surface that projects upwardly from the aforementioned groove horizontal surface (i.e. a top surface of the midsole).
Buratto teaches a shoe sole with a plate insert (#10) that includes a pair of splits, one split being at the front and one split being at the rear (see Fig. 1), therefore defining a pair of front portions (front arms #20) on the medial and lateral sides, respectively, and a pair of rear portions (rear arms #30) on the medial and lateral sides, respectively. The inclusion of the arms allows the arms to flex, during the walking cycle, independently of each other (Page 4, Lines 16-18 of Buratto).
Farina and Avar teach analogous inventions in the field of shoe soles with midsoles and outsoles. Farina and Buratto teach analogous inventions in the field of shoe soles with plates. 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 incorporated the grooves of the midsole and outsole of Avar into the midsole and outsole of Farina in order to improve their deformation capability, for added comfort during walking, while maintaining the desired support from the plate #300 that sits atop the midsole #250a, and an additional benefit would be a slight reduction in the weight of the sole, due to less material being used (i.e. where the grooves are situated, which would be gaps in material), thus resulting in a lighter weight shoe for the user. It would have been further obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have added the rear split of the plate of Buratto to the plate #300 of Farina in order to allow the resulting rear arms to flex independently of one another when the user is walking in the shoe, as taught by Buratto, wherein the resulting increased flexibility in the rear segment would be consistent with Farina already teaching that its front medial and lateral segments (arms) of its plate are split apart to permit greater flexibility in the plate (¶ 0159 of Farina). As a result of the modifications, there would be a surface that projects upwardly from the top surface of the midsole cushioning member (i.e. the quadrilaterally-shaped section defined between four intersecting points of the grooves would be a surface that projects upwardly from the grooves’ surface, which is “a top surface” of the midsole, inasmuch as the claim as required), and the rear segment would have a second split that separates it into a first rear portion and a second rear portion (via the teachings of Buratto incorporated into the plate of Farina).
Regarding claim 12, the modified footwear article of Farina (i.e. Farina in view of Avar and Buratto, as applied to claim 11 above) renders obvious that the toe segment of the plate defines a first concave curved portion that extends downward from a distal end to a first inflection point defined in the midfoot region of the sole structure (see annotated Fig. 17 of Farina above of the plate; first inflection point is generally located at point #320 in Fig. 17; first concave curved portion extends downwards from front end #302 to about point #320).
Regarding claim 13, the modified footwear article of Farina (i.e. Farina in view of Avar and Buratto, as applied to claims 11 and 12 above) renders obvious that the plate includes a middle segment defining a second concave curved portion that extends upward through the midfoot region from the first inflection point (see annotated Fig. 17 above of Farina).
Regarding claim 14, the modified footwear article of Farina (i.e. Farina in view of Avar and Buratto, as applied to claim 11 above) renders obvious that a minimum width of the second split is greater than a minimum width of the first split (as explained in the 35 U.S.C. 112(b) and Drawing objection sections above, this limitation is unclear, due to both splits seemingly converging to a width that would be essentially zero at the splits’ respective inward extensions in the plate; claim 14 is similar in form as claim 7, and since the first split belongs in the toe segment and the second split belongs in the rear segment, the fact that he front end of the toe segment (see Fig. 18 of Farina) would be the toe segment’s minimum width, which is larger than the narrowest part (i.e. minimum width) of the rear segment, then claim 14 is deemed to be met, as best as can be understood, absent further clarifying claim language).
Regarding claim 15, the modified footwear article of Farina (i.e. Farina in view of Avar and Buratto, as applied to claim 11 above) renders obvious that the surface [that projects upwardly from the top surface of the midsole cushioning member, as best as can be understood] engages a lower surface of the plate (via the added grooves from Avar into Farina’s midsole #250a upper surface, the projections formed from the intersections of pairs of parallel grooves define said surface that projects upwardly from the top surface (i.e. the surface in the grooves) of the midsole cushioning member, wherein Fig. 6 of Farina shows that the upper surface is adapted to engage with the plate #300’s lower surface).
Regarding claim 17, the modified footwear article of Farina (i.e. Farina in view of Avar, as applied to claim 16 above) renders obvious all the limitations of claim 16, as set forth above, and teaches that the plate includes a rear segment (see annotated Fig. 17 above), but does not teach that the plate has a second split that separates the rear segment into a first rear portion on the lateral side of the plate and a second rear portion on a medial side of the plate.
Buratto teaches a shoe sole with a plate insert (#10) that includes a pair of splits, one split being at the front and one split being at the rear (see Fig. 1), therefore defining a pair of front portions (front arms #20) on the medial and lateral sides, respectively, and a pair of rear portions (rear arms #30) on the medial and lateral sides, respectively. The inclusion of the arms allows the arms to flex, during the walking cycle, independently of each other (Page 4, Lines 16-18 of Buratto).
Modified Farina and Buratto teach analogous inventions in the field of shoe soles with plates. 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 split of the plate of Buratto to the plate #300 of Farina in order to allow the resulting rear arms to flex independently of one another when the user is walking in the shoe, as taught by Buratto, wherein the resulting increased flexibility in the rear segment would be consistent with Farina already teaching that its front medial and lateral segments (arms) of its plate are split apart to permit greater flexibility in the plate (¶ 0159 of Farina).
Regarding claim 18, the modified footwear article of Farina (i.e. Farina in view of Avar and Buratto, as applied to claim 17 above) renders obvious that the first rear portion and the second rear portion define a curved interior wall of the plate (see Fig. 1 of Buratto, which shows arms #30 to have a curved interior wall therebetween).
Regarding claim 19, the modified footwear article of Farina (i.e. Farina in view of Avar and Buratto, as applied to claim 18 above) renders obvious that the curved interior wall concavely curves toward the forefoot region along the first rear portion to a forwardmost point of the second split before concavely curving away from the forefoot region along the second rear portion from the forwardmost point of the second split (see Fig. 1 of Buratto, which shows the interior wall (defined by the arms #30) to first curve forwardly to a forwardmost point of the second split along the first rear arm and then curving back away from the forefoot region towards the heel end along the second rear arm).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7, 9-13 and 15-19, as best as can be understood, are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,324,477.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the issued patent essentially encompass the subject matter of the present application’s claims.
Claim of present application
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Relevant Claim of cited patent
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Claim 20, as best as can be understood, is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12,324,477 in view of Amis et al. (hereinafter “Amis”) (USPN 10,349,700).
Regarding claim 20, the cited patent claims all the limitations of independent claim 16 (from which claim 20 depends), but does not claim that the sole structure further comprises a heel support collar positioned within the heel region of the sole structure. However, Amis teaches that its sole structure can include a heel counter #204a integrally formed therewith (see Figs. 25-28 of Amis; Col. 19, Lines 10-20 of Amis), and 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 incorporated an integral heel counter in the sole structure of the cited patent in order to add support for the wearer’s heel, in use, as is well-known in the art.
Conclusion
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/JAMESON D COLLIER/ Primary Examiner, Art Unit 3732