Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2 and 4-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gross et al. (USPN 5,367,791, herein after Gross).
With respect to claim 1, Gross. discloses an article of footwear (10, see figures 8-14) comprising:
an outsole (sole 76 which includes the combination of an outsole 80 and midsole 82, see figures 8-14) having a ground-contacting face, a top face opposing the ground-contacting face, a curved anterior peripheral edge including a toe end of the outsole (see figure 8), an anterior peripheral region along (cavity 180; openings 152 and 154 are surrounded by cavity 180, in the upper face of midsole 82) and inset from the curved anterior peripheral edge (see figure 8), a curved posterior peripheral edge including a heel end of the outsole (see figure 8), and a posterior peripheral region (cavity 182; openings 156, 158, 160, 162, 164, 166 and 168 are surrounded by cavity 182, also on the upper face of the midsole) along and inset from the curved posterior peripheral edge (see figure 8);
a plurality of openings (152, 154, 156, 158, 160, 162, 164, 166, 168) in both the anterior peripheral region and posterior peripheral region of the outsole, wherein each of the plurality of openings (152, 154, 156, 158, 160, 162, 164, 166, 168) includes a recess (cavities 180 & 182, see figure 8) in the top face of the outsole in communication with a respective hole in the ground-contacting face of the outsole (cavities 180 and 182 form a recess in the top face of the outsole 80/82 which is in communication with a respective hole 152, 154, 156, 158, 160, 162, 164, 166, 168, in the ground-contacting face of the outsole), and the recess (180; 182) has a dimension larger than a dimension of the hole;
a plurality of traction elements (Regions 226, 228, 230, 232, 234, 236, 238 and 242 extend downwardly from plate 222; Regions 84 & 86 extend downwardly from plates 186), wherein each of the plurality of traction elements corresponds to one of the plurality of openings, has a protruding portion and a flange portion (portions of top plates 222 & 186 which surround and cover each region 226, 228, 230, 232, 234, 236, 238, 242 and 84, 86, see figures 8-10) extending from an upper end of the protruding portion, a shape of the flange portion conforms to a shape of the recess of the one corresponding opening of the plurality of openings (lower face of plate 222 is bonded to the upper face of cavity 182, see figures 8-14), and the each of the plurality of traction elements is disposed in the one corresponding opening (Regions 226, 228, 230, 232, 234, 236, 238 and 242 extend downwardly from plate 222. In plan view, regions 226-242 are shaped, sized and positioned relative to each other in substantially the same manner as openings 120-132 in outsole 80 and openings 156-168 in midsole 82) with an anterior flange portion and a posterior flange portion of the flange portion (plates 186 & 222) both seated in the recess (the plates 186 & 222 are located in the cavities 180 & 184) and with the protruding portion extending through the hole;
wherein the plurality of traction elements includes two posterior traction elements in a heel end of the posterior peripheral region (combination of regions 234 & 236; the combination of regions 228 & 230, see figure 9), and a combined length of each of the two posterior traction elements is a majority of a total length of the curved posterior peripheral edge in the heel end of the outsole (see figure 9 which is a bottom view of the outsole of the sole illustrated in FIG. 8).
With respect to claim 2, Gross discloses wherein a combined length of the each of the two protruding portions (Regions 226, 228, 230, 232, 234, 236, 238 and 242 extend downwardly from plate 222) of the two posterior traction elements is a majority of the total length of the curved posterior peripheral edge in the heel end of the outsole (see figure 9).
With respect to claim 4, Gross discloses wherein, for the each of the plurality of traction elements (Regions 226, 228, 230, 232, 234, 236, 238 and 242 extend downwardly from plate 222), the flange portion (upper plates 222 & 186, see figure 8) extends around a complete periphery of the upper end of the protrusion portion.
With respect to claim 5, Gross discloses wherein the plurality of traction elements includes an anterior medial traction element (curved medial portion of regions 84 & 86, see figure 8) and an anterior lateral traction element (curved lateral portion of regions 84 & 86, see figure 8) directly opposite the anterior medial traction element, and a length of the protruding portion of the anterior medial traction element is the same as a length of the protruding portion of the anterior lateral traction element (see figure 8).
With respect to claim 6, Gross discloses wherein the anterior medial traction element is curved and follows a curve of a medial side of the curved anterior peripheral edge and the anterior lateral traction element is curved and follows a curve of a lateral side of the curved anterior peripheral edge (see figure 8).
With respect to claim 7, Gross discloses wherein the two posterior traction elements include a posterior medial traction element (combination of regions 228 & 230) and a posterior lateral traction element (combination of regions 234 & 236) directly opposite the posterior medial traction element, and a length of the protruding portion of the posterior medial traction element is the same as a length of the protruding portion of the posterior lateral traction element (see figure 9).
With respect to claim 8, Gross discloses wherein a posterior end of the posterior medial traction element (combination of regions 228 & 230) curves toward a vertical midline of the outsole and a posterior end of the posterior lateral traction element (combination of regions 234 & 236) curves toward the vertical midline of the outsole (see figure 9 which is a bottom view of the outsole of the sole illustrated in FIG. 8).
With respect to claim 9, Gross discloses wherein a layer of material (The upper face of plate 186 is attached to planar cover 200, preferably fabricated of a fibrous material. In cross-section, shell 208 includes upper plate 222, having an upper face that is bonded to the lower face of fabric cover plate 224) covers the top face of the outsole, and the flange portion (plates 186 & 222) of the each of the plurality of traction elements is positioned between the layer of material and the top face of the outsole.
With respect to claim 10, Gross discloses wherein the each of the plurality of traction elements comprises a first material having a first hardness (open-cell polyurethane foam 246 in the chambers of the regions, and the walls of the regions 84, 86 and 226-242), the outsole comprises a second material having a second hardness (abrasion resistant rubber), and the first hardness is different than the second hardness.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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) 3 and 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over Gross.
With respect to claim 3, Gross discloses wherein the plurality of traction elements includes two posterior medial traction elements (combination of 228 & 230), each including anterior flange portions (medial side of plate 222) extending from an anterior side of the upper end of the protruding portion toward the toe end of the outsole (see figures 8-10).With respect to each of the two anterior flanges has a length greater than a length of the protruding portion from which it extends, it would have been obvious to one of ordinary skill in the art to modify the length of the anterior flange portion as claimed, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459,105 USPQ 237 (CCPA 1955).
With respect to claim 11, Gross discloses an article of footwear (10, see figures 8-14) comprising:
an outsole (sole 76 which includes the combination of an outsole 80 and midsole 82, see figures 8-14) having a ground-contacting face, a top face opposing the ground- contacting face (see figure 8), a curved anterior peripheral edge including a toe end of the outsole, an anterior peripheral region (cavity 180; openings 152 and 154 are surrounded by cavity 180, in the upper face of midsole 82) along and inset from the curved anterior peripheral edge, a curved posterior peripheral edge including a heel end of the outsole, and a posterior peripheral region (cavity 182; openings 156, 158, 160, 162, 164, 166 and 168 are surrounded by cavity 182, also on the upper face of the midsole) along and inset from the curved posterior peripheral edge;
a plurality of openings (152, 154, 156, 158, 160, 162, 164, 166, 168) in both the anterior peripheral region and the posterior peripheral region of the outsole, wherein each of the plurality of openings (152, 154, 156, 158, 160, 162, 164, 166, 168) includes a recess (the cavities 180 and 182 form a recess in the top face of the outsole 80/82 which is in communication with a respective hole 152, 154, 156, 158, 160, 162, 164, 166, 168, in the ground-contacting face of the outsole) in the top face of the outsole in communication with a respective hole (152, 154, 156, 158, 160, 162, 164, 166, 168) in the ground-contacting face of the outsole, and the recess (180; 182) has a dimension larger than a dimension of the hole (see figures 8 & 10);
a plurality of traction elements (Regions 226, 228, 230, 232, 234, 236, 238 and 242 extend downwardly from plate 222; Regions 83 & 84 extend downwardly from plates 186), wherein each of the plurality of traction elements corresponds to one of the plurality of openings, has a protruding portion and a flange portion (portions of top plates 222 & 186 which surround and cover each region 226, 228, 230, 232, 234, 236, 238, 242 and 83-84, see figure 10) extending from an upper end of the protruding portion, a shape of the flange portion (top plates 186 & 222) conforms to a shape of the recess (cavities 180 & 182) of the one corresponding opening of the plurality of openings, and the each of the plurality of traction elements is disposed in the one corresponding opening (Regions 226, 228, 230, 232, 234, 236, 238 and 242 extend downwardly from plate 222. In plain view, regions 226-242 are shaped, sized and positioned relative to each other in substantially the same manner as openings 120-132 in outsole 80 and openings 156-168 in midsole 82) with an anterior flange portion and a posterior flange portion of the flange portion both seated in the recess and with the protruding portion extending through the hole;
wherein the plurality of traction elements includes two posterior traction elements in the posterior peripheral region (combination of regions 234 & 236; the combination of regions 226, 228, 230, see figure 9), and for each of the two posterior traction elements, the flange portion includes the anterior flange portion extending beyond the upper end of the protruding portion toward the toe end of the outsole, the anterior flange portion has an anterior flange portion length.
Gross as described above discloses all the limitations of the claims except for the anterior flange portion length ranging from 1 to 2 times a length of the protruding portion from which the anterior flange portion extends. It would have been obvious to one of ordinary skill in the art to modify the length of the anterior flange portion as claimed, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459,105 USPQ 237 (CCPA 1955).
With respect to claim 12, Gross discloses wherein the plurality of traction elements includes an anterior medial traction element (combination of regions 228 & 230, see figure 9) and an anterior lateral traction element (combination of regions 236 & 234) directly opposite the anterior medial traction element, and a length of the protruding portion of the anterior medial traction element appears to be the same as a length of the protruding portion of the anterior lateral traction element (see figure 9).
With respect to claim 13, Gross discloses wherein the anterior medial traction element (combination of regions 228 & 230, see figure 9) is curved and follows a curve of a medial side of the curved anterior peripheral edge and the anterior lateral traction element (combination of regions 236 & 234) is curved and follows a curve of a lateral side of the curved anterior peripheral edge.
With respect to claim 14, Gross discloses wherein the two posterior traction elements include a posterior medial traction element (combination of regions 228 & 230, see figure 9) and a posterior lateral traction element (combination of regions 236 & 234) directly opposite the posterior medial traction element, and a length of the protruding portion of the posterior medial traction element appears to be the same as a length of the protruding portion of the posterior lateral traction element (see figure 9).
With respect to claim 15, Gross discloses wherein a posterior end of the posterior medial traction element curves toward a vertical midline of the outsole and a posterior end of the posterior lateral traction element curves toward the vertical midline of the outsole (tips 242 and 244 of regions 226-238 compress vertically, so they are aligned with the bottom portions of bottom face 92 of outsole 80 immediately surrounding each tip).
With respect to claim 16, Gross discloses wherein a layer of material (The upper face of plate 186 is attached to planar cover 200, preferably fabricated of a fibrous material. In cross-section, shell 208 includes upper plate 222, having an upper face that is bonded to the lower face of fabric cover plate 224) covers the top face of the outsole, and the flange portion (plates 186 & 222) of the each of the plurality of traction elements is positioned between the layer of material and the top face of the outsole.
With respect to claim 17, Gross discloses wherein the each of the plurality of traction elements comprises a first material having a first hardness (open-cell polyurethane foam 246 in the chambers of the regions, and the walls of the regions), the outsole comprises a second material having a second hardness (abrasion resistant rubber), and the first hardness is different than the second hardness.
With respect to claim 18, Gross discloses wherein, for the each of the plurality of traction elements (Regions 226, 228, 230, 232, 234, 236, 238 and 242 extend downwardly from plate 222 & regions 84 & 86 extend downwardly from plate 186), the flange portion (plates 186 & 222) extends around a complete periphery of the protrusion portion (see figures 8-10).
With respect to claim 19, Gross discloses that a combined length of each of the two posterior traction elements is a majority of a total length of the curved posterior peripheral edge in the heel end of the outsole (see figure 9 which is a bottom view of the outsole of the sole illustrated in FIG. 8).
With respect to claim 20, Gross discloses wherein a combined length of the each of the two flange portions of the two posterior traction elements can be a majority of the total length of the curved posterior peripheral edge in the heel end of the outsole. It would have been obvious to one of ordinary skill in the art to modify the length of the flange portion as claimed, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459,105 USPQ 237 (CCPA 1955).
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,376,645. Although the claims at issue are not identical, they are not patentably distinct from each other because since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent. The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter. Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See MPEP § 804.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,564,446. Although the claims at issue are not identical, they are not patentably distinct from each other because since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent. The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter. Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See MPEP § 804.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shown are outsoles analogous to applicant’s instant invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JILA M MOHANDESI whose telephone number is (571)272-4558. The examiner can normally be reached M-Thurs. 7:00-5:00 EST.
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/JILA M MOHANDESI/Primary Examiner, Art Unit 3732
JMM
12/04/2025