DETAILED ACTION
This is in response to application filed on June 23rd, 2025 in which claims 1-20 are presented for examination.
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 III (Figs. 29-43) in the reply filed on 1/21/26 is acknowledged.
Applicant indicated that all claims 1-20 encompass the election. However, examiner respectfully disagrees. Claim(s) 15-17, 20 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected embodiment, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/21/26. More specifically:
Claim 15 is directed to protrusion 790, which is not a term disclosed in the provisional application 63/067,073 filed 8/18/2020 and was first mentioned in a parent application 17/992,397 of 11/22/22, similarly herein, as being directed to an element in Fig. 77 (herein, see [00209]). As such, this is directed to a non-elected embodiment and is withdrawn.
Claim 16, though currently dependent on Claim 11, also refers to “the protrusion”, and is understood to be directed to similar structure as Claim 15 and is withdrawn for similar reasons.
Claim 17 is being withdrawn at least for currently depending on Claim 16, which has been withdrawn.
Claim 20 also refers to a protrusion and is understood to be directed to similar structure as Claim 15 and is withdrawn for similar reasons.
Drawings
The drawings are objected to for the following:
Fig. 30 is labeled “104” when it should be labeled “304”
Review is requested of Fig. 35, whether element 336 is pointing to the correct structure
Fig. 35 has extraneous lines, indicated below; the lines are not disclosed in the specification nor labeled and should be deleted unless persuasively clarified
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Fig. 37 the endpoint of the reference line for element 336 seems to be pointing to the wrong structure
Clarification is requested as to why Figs. 36 and 37 seems to indicate that sole plate 336 is too layers
No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
[0001] should read “filed February 27, 2023, which are divisionals of U.S. Patent Application 17/992,397, filed November 22, 2022 and of U.S. Patent Application 17/404,388”
17/404,388 and 17/992,397 elected Figs. 76-89; 18/114,670 and 18/229,097 elected Figs. 66-75, 86-89
Appropriate correction is required.
Claim Objections
Claim(s) 1, 7, 9-11, 13 is/are objected to because of the following informalities:
Claim 1 Line 8 delete “though” and substitute –through--
Claim 7 Line 2 before “in the forefoot region” add –is—
Claim 9 Line 3 before “is above the heelmost end” add –member—
Claim 10 Line 3 before “is above the heelmost end” add –member—
Claim 11 Line 14 delete “though” and substitute –through--
Claim 13 Line 2 before “curved” add –a--
Disagreement with any of the aforementioned may warrant at least a 112(b) indefiniteness rejection without constituting a new rejection
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim(s) 1-14, 18, 19 is/are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention.
Claim 1 Line 4 “first cushioning member directly coupled to the upper” is new matter. The term is not in the provisional application 63/067,073 (filed 8/18/2020) and is not in the original parent 17/404,388 (filed 8/17/21). Instead, the term was first introduced in the summary [0023] of 18/229,097 (specifically, coupling of the first member to the upper; also direct coupling of the first member to the upper). As such, no support is found in the original disclosure for coupling of the recited elements, let alone direct coupling. Furthermore, the figures do not provide enough support for such a limitation, as there is no indication of any coupling element, let alone a location of the coupling element. For example, Fig. 34 could be “coupled” at the heelmost part of 332, or perhaps at the sidewalls in Figs. 35, 38, 39, etc. But without any original disclosure, none of these conclusions are supported, as the Figures on their own do not provide clear support for this limitation, but only guesswork, such as the aforementioned possibilities. Claim can read “first cushioning member directly adjacent to the upper.”
Claim 1 Line 5 “second cushioning member directly coupled to the upper” is new matter for reasons similarly indicated for Claim 1 Line 4. The term is not in the provisional application 63/067,073 (filed 8/18/2020) and is not in the original parent 17/404,388 (filed 8/17/21). Instead, the term was first introduced in the summary [0023] of 18/229,097 (specifically, coupling of the second member to the upper; also direct coupling of the second member to the upper). As such, no support is found in the original disclosure for coupling of the recited elements, let alone direct coupling. Furthermore, the figures do not provide enough support for such a limitation, as there is no indication of any coupling element, let alone a location of the coupling element. For example, Fig. 34 could be “coupled” at the topmost surface of 332, or perhaps at the sidewalls in Fig. 35, 37, etc. But without any original disclosure, none of these conclusions are supported, as the Figures on their own do not provide clear support for this limitation, but only guesswork, such as the aforementioned possibilities. Claim can read “first cushioning member directly adjacent to the upper.”
Claim 1 Lines 7-8 “the plate being directly coupled to each of the upper, the first cushioning member, and the second cushioning member” is considered new matter for reasons similarly indicated for Claim 1 Line 4. The term is not in the provisional application 63/067,073 (filed 8/18/2020) and is not in the original parent 17/404,388 (filed 8/17/21). Instead, the term was first introduced in the summary [0023] of 18/229,097 (specifically, “each of the sole plate, the first cushioning member, and the second cushioning member can be directly coupled to the upper”; relatedly, “the sole plate can be coupled to the first cushioning member”). As such, no support is found in the original disclosure for coupling of the recited elements, let alone direct coupling. In addition, one of the previous parents 18/114,670 [0018] first indicated that portions of the sole plate is coupled to the upper (“sole plate can include a substantially planar rear portion coupled to the first cushioning member, an anterior curved portion coupled to the second cushioning member”), but is also not the original disclosure. Furthermore, the figures do not provide enough support for such a limitation, as there is no indication of any coupling element, let alone a location of the coupling element. The plate may or may not have been coupled, let alone directly, to each of the recited elements, or only one and sandwiched otherwise. Without any original disclosure with these elements, the limitation is not supported, as the Figures on their own do not provide clear support for this limitation, but only guesswork, such as the aforementioned possibilities. Claim can read “the plate being directly adjacent to each of the upper, the first cushioning member, and the second cushioning member.”
Claim 2 “directly coupled” is considered new matter for reasons similarly indicated for Claim 1 Lines 7-8. One of the previous parents 18/114,670 [0018] first indicated that these recited portions of the sole plate are coupled to the upper, but is also not the original disclosure, let alone providing support for directly coupled.
Claim 4 Line 4 “wherein the second cushioning member defines a heelmost end of the sole structure” is new matter pending the clarification of how second cushioning member 334 could be heelmost (see 112(b) indefiniteness rejection).
Claim 6 “outsole coupled to the first cushioning member” is considered new matter. The term is not in the provisional application 63/067,073 (filed 8/18/2020) and is not in the original parent 17/404,388 (filed 8/17/21). Instead, the term was first introduced in the summary [0011] of 17/992,397 (specifically, “outsole can include a first outsole portion coupled to the first cushioning member and a second outsole portion coupled to the second cushioning member”). As such, no support is found in the original disclosure for coupling of the recited elements. Furthermore, the figures do not provide enough support for such a limitation, as there is no indication of any coupling element, let alone a location of the coupling element. For example, Fig. 34 outsole 330 at the forefoot could have been coupled only at the toemost part to the upper, or Fig. 39 the outsole 330 in the heel region could have been a friction fit and not coupled, etc. Without any original disclosure with these elements, the limitation is not supported, as the Figures on their own do not provide clear support for this limitation, but only guesswork, such as the aforementioned possibilities. Claim can read “the outsole is adjacent to the first cushioning member.”
Claim 7 “toemost end of the first cushioning member [is] in the forefoot region and a heelmost end of the first cushioning member is in the midfoot region, and wherein a toemost end of the second cushioning member is in the midfoot region and a heelmost end of the second cushioning member is in the heel region” is considered new matter, especially pending clarification of the 112(b) indefiniteness rejection. It is new matter to establish Claim 7 in the context of Claim 1 (see 112(b) rejection). Claim 7 is recommended to read as the interpretation indicated in the 112(b) rejections.
Claim 9 “toemost end of the second cushioning member overlaps the heelmost end of the first cushioning member such that the toemost end of the second cushioning member is above the heelmost end of the first cushioning member when the article of footwear is viewed from the lateral side” is considered new matter. The term “overlap” is not in the provisional application, let alone the detailed description of the instant application, and only appears for the first time in the family of applications in the summary of the instant application for specification antecedent basis. Based on the election, Fig. 31 shows no overlap between 332 and 334. However, see 112(b) indefiniteness rejection below for the definition of the term “overlap”. The claim is considered new matter pending clarification, and is recommended to read as the interpretation indicated in the 112(b) rejections.
Claim 9 is also considered new matter pending the clarification of how second cushioning member 334 toemost end overlaps a heelmost end of the first cushioning member 332 (see 112(b) indefiniteness rejection).
Claim 10 “toemost end of the second cushioning member overlaps the heelmost end of the first cushioning member such that the toemost end of the second cushioning member is above the heelmost end of the first cushioning member when the article of footwear is viewed from the lateral side” is considered new matter. The term “overlap” is not in the provisional application, let alone the detailed description of the instant application, and only appears for the first time in the family of applications in the summary of the instant application for specification antecedent basis. Based on the election, Fig. 31 shows no overlap between 332 and 334. However, see 112(b) indefiniteness rejection below. The claim is considered new matter pending clarification, and is recommended to read as the interpretation indicated in the 112(b) rejections.
Claim 10 is also considered new matter pending the clarification of how second cushioning member 334 toemost end overlaps a heelmost end of the first cushioning member 332 (see 112(b) indefiniteness rejection).
Claim 11 Line 7 “first cushioning member directly coupled to the upper” is rejected for new matter for reasons similar to Claim 1 Line 4.
Claim 11 Line 10 “second cushioning member directly coupled to the upper” is rejected for new matter for reasons similar to Claim 1 Line 5.
Claim 11 Line 17 “outsole coupled to the second cushioning member” is rejected for new matter for reasons similar to Claim 6. The term is not in the provisional application 63/067,073 (filed 8/18/2020) and is not in the original parent 17/404,388 (filed 8/17/21). Instead, the term was first introduced in the summary [0011] of 17/992,397 (specifically, “outsole can include a first outsole portion coupled to the first cushioning member and a second outsole portion coupled to the second cushioning member”). As such, no support is found in the original disclosure for coupling of the recited elements. Furthermore, the figures do not provide enough support for such a limitation, as there is no indication of any coupling element, let alone a location of the coupling element. For example, Fig. 34 outsole 330 at the forefoot could have been coupled only at the toemost part to the upper, or Fig. 39 the outsole 330 in the heel region could have been a friction fit and not coupled, etc. Without any original disclosure with these elements, the limitation is not supported, as the Figures on their own do not provide clear support for this limitation, but only guesswork, such as the aforementioned possibilities. Claim can read “the outsole is adjacent to the second cushioning member.”
Claim 11 Lines 7-12 is rejected for new matter for reasons similar to Claim 4 and Claim 7.
Claim 13 Lines 1-2 “plate includes a substantially planar portion that is coupled to the first cushioning member” is rejected for new matter for reasons similar to Claim 1 Lines 7-8 and Claim 2.
Claim 14 Lines 3-4 “anterior curved portion…that is coupled to the second cushioning member” is rejected for new matter for reasons similar to Claim 1 Lines 7-8 and Claim 2.
Claim 19 Line 7 “first cushioning member directly coupled to the upper” is rejected for new matter for reasons similar to Claim 1 Line 4.
Claim 19 Line 10 “second cushioning member directly coupled to the upper” is rejected for new matter for reasons similar to Claim 1 Line 5.
Claim 19 Lines 7-12 is rejected for new matter for reasons similar to Claim 7.
Claim 19 Lines 13-14 “plate…includes a substantially planar portion coupled to the first cushioning member, an anterior curved portion coupled to the second cushioning member” is rejected for new matter for reasons similar to Claim 1 Lines 7-8 and Claim 2.
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.
Claim(s) 1-14, 18, 19 is/are rejected under U.S.C. 112(b).
The term “directly coupled” in Claim 1 Lines 4, 5, 7 is unclear and therefore renders the claim indefinite. Especially in light of the new matter rejections, it is unclear where the coupling element(s) is/are, such that the metes and bounds of the term are also unclear.
The term “directly coupled” in Claim 2 Lines 2, 3 is unclear and therefore renders the claim indefinite. Especially in light of the new matter rejections, it is unclear where the coupling element(s) is/are, such that the metes and bounds of the term are also unclear.
The term “second cushioning member defines a heelmost end of the sole structure” in Claim 4 Line 4 is unclear and therefore renders the claim indefinite. Claim 1, on which Claim 4 depends, indicated that the second cushioning member (334) is of the forefoot region; as such, it is unclear whether Claim 4 should read “first cushioning member”. For the purposes of applying art and providing rejections, the term will be interpreted as “first.”
The term “coupled” in Claim 6 is unclear and therefore renders the claim indefinite. Especially in light of the new matter rejections, it is unclear where the coupling element(s) is/are, such that the metes and bounds of the term are also unclear.
The term “toemost end of the first cushioning member [is] in the forefoot region and a heelmost end of the first cushioning member is in the midfoot region” in Claim 7 Lines 1-3 is unclear and therefore renders the claim indefinite. Claim 1, on which Claim 7 depends, indicated that it is the second cushioning member (334) that is of the forefoot region, and therefore would have ends in the forefoot and midfoot; as such, it is unclear whether Claim 7 Lines 1-3 should read “first cushioning member”. For the purposes of applying art and providing rejections, the term will be interpreted as “first.”
The term “toemost end of the second cushioning member [is] in the midfoot region and a heelmost end of the second cushioning member is in the heel region” in Claim 7 Lines 4-5 is unclear and therefore renders the claim indefinite. Claim 1, on which Claim 7 depends, indicated that it is the first cushioning member (332) that is of the heel region, and therefore would have ends in the midfoot and heel; as such, it is unclear whether Claim 7 Lines 4-5 should read “second cushioning member”. For the purposes of applying art and providing rejections, the term will be interpreted as “second.”
The term “toemost end of the second cushioning member overlaps the heelmost end of the first cushioning member such that the toemost end of the second cushioning member is above the heelmost end of the first cushioning member when the article of footwear is viewed from the lateral side” in Claim 9 is unclear and therefore renders the claim indefinite. It is unclear how a toe end of second cushioning member being 334, as established in Claim 1, on which Claim 9 eventually depends, could relate to the heel end of the first cushioning member being 332, as established in Claim 1. For the purposes of applying art and providing rejections, the term will be interpreted “toemost end of the first cushioning member overlaps the heelmost end of the second cushioning member such that the toemost end of the first cushioning member is above the heelmost end of the second cushioning member”. The term “toemost end of the second cushioning member overlaps the heelmost end of the first cushioning member such that the toemost end of the second cushioning member is above the heelmost end of the first cushioning member when the article of footwear is viewed from the lateral side” in Claim 9 is further unclear and therefore renders the claim indefinite. Even if Claim 9 is interpreted as toe end of first 332 overlaps heel end of second 334, Fig. 31 of the elected embodiment (Figs. 29-43) shows no overlap. Only Figs. 6, 19, 46 of non-elected embodiments show overlap. As such, the metes and bounds of the term are unclear. Although applicant is allowed to be their own lexicographer, applicant must then clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning the term would otherwise possess (see MPEP 2111.01 IV). Due to the lack of special definition, the term is unclear and clarification is needed as to applicant intention. It is unclear if the remaining limitations of the claim, in light of the new interpretation, specifically that the toe end of the first cushioning member is above the heel end of the second cushioning member, is meant to define the term “overlap.” For the purposes of applying art and providing rejections, the term will be interpreted as such, such that any point of the toemost end of the first cushioning member being above any point of the heel end of the second cushioning member will meet the term overlap.
The term “toemost end of the second cushioning member overlaps the heelmost end of the first cushioning member such that the toemost end of the second cushioning member is above the heelmost end of the first cushioning member when the article of footwear is viewed from the medial side” in Claim 10 is unclear and therefore renders the claim indefinite. It is unclear how a toe end of second cushioning member being 334, as established in Claim 1, on which Claim 10 eventually depends, could relate to the heel end of the first cushioning member being 332, as established in Claim 1. For the purposes of applying art and providing rejections, the term will be interpreted “toemost end of the first cushioning member overlaps the heelmost end of the second cushioning member such that the toemost end of the first cushioning member is above the heelmost end of the second cushioning member”. The term “toemost end of the second cushioning member overlaps the heelmost end of the first cushioning member such that the toemost end of the second cushioning member is above the heelmost end of the first cushioning member when the article of footwear is viewed from the medial side” in Claim 10 is further unclear and therefore renders the claim indefinite. Even if Claim 10 is interpreted as toe end of first 332 overlaps heel end of second 334, Fig. 31 of the elected embodiment (Figs. 29-43) shows no overlap. Only Figs. 6, 19, 46 of non-elected embodiments show overlap. As such, the metes and bounds of the term are unclear. Although applicant is allowed to be their own lexicographer, applicant must then clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning the term would otherwise possess (see MPEP 2111.01 IV). Due to the lack of special definition, the term is unclear and clarification is needed as to applicant intention. It is unclear if the remaining limitations of the claim, in light of the new interpretation, specifically that the toe end of the first cushioning member is above the heel end of the second cushioning member, is meant to define the term “overlap.” For the purposes of applying art and providing rejections, the term will be interpreted as such, such that any point of the toemost end of the first cushioning member being above any point of the heel end of the second cushioning member will meet the term overlap.
Claim 11 is rejected for reasons similarly indicated for Claim 1.
The term “coupled” in Claim 11 Line 17 is unclear and therefore renders the claim indefinite. Especially in light of the new matter rejections, it is unclear where the coupling element(s) is/are, such that the metes and bounds of the term are also unclear.
The term “coupled” in Claim 13 is unclear and therefore renders the claim indefinite. Especially in light of the new matter rejections, it is unclear where the coupling element(s) is/are, such that the metes and bounds of the term are also unclear.
The term “coupled” in Claim 14 is unclear and therefore renders the claim indefinite. Especially in light of the new matter rejections, it is unclear where the coupling element(s) is/are, such that the metes and bounds of the term are also unclear.
Claim 19 is rejected for reasons similarly indicated for Claim 1.
The term “coupled” in Claims 19 Lines 13, 14 is unclear and therefore renders the claim indefinite. Especially in light of the new matter rejections, it is unclear where the coupling element(s) is/are, such that the metes and bounds of the term are also unclear.
Dependent claims are rejected at the least for depending on rejected claims.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
As best understood in light of the 112(b) rejections-- Claim(s) 1-14, 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fahmi et al (USPN 11737509), herein Fahmi (disclosure from the provisional application 62/945,826 utilized herein).
Regarding Claim 1, Fahmi teaches an article of footwear defining a lateral side, a medial side, a forefoot region, a midfoot region, and a heel region (it is noted that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations; nevertheless, see Figs. 1, 6; [0026] "article of footwear 10"; Claim 1 "plate extending from a first end in a forefoot region to a second end in a heel region"; Claim 1 "gap formed in a mid-foot region"; Claim 2 "medial side"; Claim 2 "lateral side"; [0027] "article of footwear 10...include a forefoot region 20, a mid-foot region 22, and a heel region 24"; [0026] "footwear 10 into a medial side 16 and a lateral side 18"), the article of footwear comprising:
an upper (see Figs. 1, 6; [0026] "article of footwear 10 includes an upper 100");
a first cushioning member (210) directly coupled to the upper in the heel region (see Figs. 1, 3,6 for directly coupled to 100; [0031] "heel cushioning element 210", wherein Fahmi teaches direct coupling inasmuch as applicant specification defines the term);
a second cushioning member (208) directly coupled to the upper in the forefoot region (see Figs. 1, 3, 6 for directly coupled to 100; [0031] "forefoot cushioning element 208"; wherein Fahmi teaches direct coupling inasmuch as applicant specification defines the term) and
a plate configured as a unitary plate extends continuously from the forefoot region to the heel region (see Figs. 3, 6 for unitary and continuous extent; [0031] "rigid or semi-rigid plate 206"; [0032] "plate 206 extends from…forefoot region 20"; Claim 1);
the plate being directly coupled to each of the upper, the first cushioning member, and the second cushioning member (see Figs. 1, 3, 6 for directly coupled to upper 100, to first cushion 210 and to second cushion 208; wherein Fahmi teaches direct coupling inasmuch as applicant specification defines the term; nevertheless, for cushioning members-- see Claim 1 "attached" for the plate to cushioning members; 0045] "forefoot cushioning element 208 is attached to a bottom surface of the plate 206"; [0047] "heel cushioning element 210 is attached to a bottom surface of the plate 206"; for upper --[0030] "upper 100 includes a strobel having a bottom surface"; [0032] "plate 206 may attach to...upper 100");
and the plate extending through a gap that is defined between the first cushioning member and the second cushioning member (see Figs. 5, 6; [0047] "heel cushioning element 210 is separated from the…forefoot cushioning element 208 by a gap 242 in the mid-foot region 22"; see extrinsic evidence Merriam Webster NPL, wherein the plate extends through inasmuch as it extends from one member to another).
Regarding Claim 2, Fahmi teaches the article of footwear of Claim 1, wherein the plate includes an anterior curved portion that is directly coupled to the second cushioning member (see Fig. 6 for 206 at 208 directly coupled and curved, labeled in Fig. 1; wherein Fahmi teaches direct coupling inasmuch as applicant specification defines the term),
a substantially planar portion that is directly coupled to the first cushioning member (see Fig. 6 for 206 at 210 substantially planar, labeled in Fig. 1; wherein Fahmi teaches direct coupling inasmuch as applicant specification defines the term),
and a posterior curved portion that extends between the anterior curved portion and the substantially planar portion (see Fig. 6 for curved 206 in gap, labeled in Fig. 1).
Regarding Claim 3, Fahmi teaches the article of footwear of claim 2, wherein the posterior curved portion is positioned in the gap (see Fig. 6 for 206 in gap, labeled in Fig. 1).
Regarding Claim 4, Fahmi teaches the article of footwear of claim 3, wherein the first cushioning member, the second cushioning member, and the plate defines a sole structure of the article of footwear (Fahmi teaches the members and plate exists, and therefore defines a sole structure, especially in light of [0031] "sole structure 200 includes a midsole 202…and an outsole 204 configured to provide a ground-engaging surface to the article of footwear 10…midsole 202 includes…plate 206, a forefoot cushioning element 208, a heel cushioning element 210"), and
wherein the first cushioning member defines a heelmost end of the sole structure (see Fig. 6 for FIRST 210, labeled in Fig. 1).
Regarding Claim 5, Fahmi teaches the article of footwear of claim 4, wherein the first cushioning member is entirely spaced apart from the second cushioning member by the gap (see Fig. 6; [0047]; labeled in Fig. 1).
Regarding Claim 6, Fahmi teaches the article of footwear of claim 4, further comprising an outsole coupled to the first cushioning member (see Fig. 6; [0031] "outsole 204 includes…toe fragment 216 attached to the forefoot cushioning element 208…a forefoot fragment 218 disposed in the forefoot region 20…and a heel fragment 220 attached to the heel cushioning element 210"; met by 220; labeled in Fig. 1).
Regarding Claim 7, Fahmi teaches the article of footwear of claim 4, wherein a toemost end of the second cushioning member in the forefoot region and a heelmost end of the second cushioning member is in the midfoot region (see Fig. 6, labeled in Fig. 1), and
wherein a toemost end of the first cushioning member is in the midfoot region and a heelmost end of the first cushioning member is in the heel region (see Fig. 6, labeled in Fig. 1).
Regarding Claim 8, Fahmi teaches the article of footwear of claim 7, wherein the plate is visible when the article of footwear is viewed from both the lateral side and the medial side (see Figs. 1, 2 for 206; [0007] "Figs. 1…lateral side"; [0008] "Figs. 2…medial side").
Regarding Claim 9, Fahmi teaches the article of footwear of claim 8, wherein the toemost end of the first cushioning member overlaps the heelmost end of the second cushioning member such that the toemost end of the first cushioning member is above the heelmost end of the second cushioning member when the article of footwear is viewed from the lateral side (see Fig. 6 wherein toemost end of 210 above the heelmost end of 208; labeled in Fig. 1; Fig. 1 is lateral, so Fig. 6 is medial, but Figs. 8-11 show the recitation is still met on lateral side).
Regarding Claim 10, Fahmi teaches the article of footwear of claim 9, wherein the toemost end of the first cushioning member overlaps the heelmost end of the second cushioning member such that the toemost end of the first cushioning member is above the heelmost end of the second cushioning member when the article of footwear is viewed from the medial side (see Fig. 6 wherein toemost end of 210 above the heelmost end of 208; labeled in Fig. 1; Fig. 1 is lateral, so Fig. 6 is medial).
Regarding Claim 11, Fahmi teaches an article of footwear defining a lateral side, a medial side, a forefoot region defining a toe end, a midfoot region, and a heel region defining a heel end (it is noted that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations; nevertheless, see Figs. 1, 6; [0026] "article of footwear 10"; Claim 1 "plate extending from a first end in a forefoot region to a second end in a heel region" indicating toe end and heel end; Claim 1 "gap formed in a mid-foot region"; Claim 2 "medial side"; Claim 2 "lateral side"; [0027] "article of footwear 10...include a forefoot region 20, a mid-foot region 22, and a heel region 24"; [0026] "footwear 10 into a medial side 16 and a lateral side 18"), the article of footwear comprising:
an upper (see Figs. 1, 6; [0026] "article of footwear 10 includes an upper 100");
a sole structure coupled to the upper and defining a ground-engaging surface of the article of footwear ([0031] "sole structure 200 includes a midsole 202…and an outsole 204 configured to provide a ground-engaging surface to the article of footwear 10…midsole 202 includes…plate 206, a forefoot cushioning element 208, a heel cushioning element 210"; wherein Fahmi teaches coupling inasmuch as applicant specification defines the term), the sole structure including:
a first cushioning member (210) directly coupled to the upper in the heel region (see Figs. 1, 3,6 for directly coupled to 100; [0031] "heel cushioning element 210", wherein Fahmi teaches direct coupling inasmuch as applicant specification defines the term);
wherein a toemost end of the first cushioning member is in the midfoot region and a heelmost end of the first cushioning member defines a heelmost end of the sole structure (see Fig. 6 for FIRST 210, labeled in Fig. 1),
a second cushioning member (208) directly coupled to the upper in the forefoot region (see Figs. 1, 3, 6 for directly coupled to 100; [0031] "forefoot cushioning element 208"; wherein Fahmi teaches direct coupling inasmuch as applicant specification defines the term),
wherein a toemost end of the second cushioning member is in the forefoot region and a heelmost end of the second cushioning member is in the midfoot region (see Fig. 6, labeled in Fig. 1), and
a plate configured as a unitary plate extends continuously from the forefoot region to the heel region (see Figs. 3, 6 for unitary and continuous extent; [0031] "rigid or semi-rigid plate 206"; [0032] "plate 206 extends from…forefoot region 20"; Claim 1);
the plate extending through a gap that is defined between the first cushioning member and the second cushioning member (see Figs. 5, 6; [0047] "heel cushioning element 210 is separated from the…forefoot cushioning element 208 by a gap 242 in the mid-foot region 22"; see extrinsic evidence Merriam Webster NPL, wherein the plate extends through inasmuch as it extends from one member to another),
and the plate being visible when the article of footwear is viewed from both the lateral side and the medial side (see Figs. 1, 2 for 206; [0007] "Figs. 1…lateral side"; [0008] "Figs. 2…medial side"); and
an outsole coupled to the second cushioning member (see Figs. 1, 6; [0031] "outsole 204 includes…toe fragment 216 attached to the forefoot cushioning element 208…a forefoot fragment 218 disposed in the forefoot region 20…and a heel fragment 220 attached to the heel cushioning element 210"; met by 218),
the outsole extending from a first end positioned in the forefoot region to a second end positioned in the midfoot region (see Fig. 6 for 218, labeled in Fig. 1).
Regarding Claim 12, Fahmi teaches the article of footwear of claim 11, wherein the plate is visible when the article of footwear is viewed from a bottom of the article of footwear (see Fig. 5, labeled in Fig. 1; [0047] "bottom surface of the plate 206 is exposed along the gap 242").
Regarding Claim 13, Fahmi teaches the article of footwear of claim 11, wherein the plate includes a substantially planar portion that is coupled to the first cushioning member and curved portion that extends through the gap (see Fig. 6, labeled in Fig. 1; see Fig. 6 for 206 at 210 substantially planar, labeled in Fig. 1; and extent through gap; wherein Fahmi teaches coupling inasmuch as applicant specification defines the term; nevertheless, for cushioning members-- see Claim 1 "attached" for the plate to cushioning members; [0047] "heel cushioning element 210 is attached to a bottom surface of the plate 206").
Regarding Claim 14, Fahmi teaches the article of footwear of claim 13, wherein the curved portion includes a posterior curved portion that extends from the substantially planar portion and into the gap (see Fig. 6 for curved 206 in gap and from the substantially planar portion, labeled in Fig. 1),
and an anterior curved portion that extends from the posterior curved portion and that is coupled to the second cushioning member (see Fig. 6 for 206 at 208 coupled and curved, labeled in Fig. 1; wherein Fahmi teaches coupling inasmuch as applicant specification defines the term; nevertheless, for cushioning members-- see Claim 1 "attached" for the plate to cushioning members; [0045] "forefoot cushioning element 208 is attached to a bottom surface of the plate 206").
Regarding Claim 19, Fahmi teaches an article of footwear defining a lateral side, a medial side, a forefoot region defining a toe end, a midfoot region, and a heel region defining a heel end (it is noted that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations; nevertheless, see Figs. 1, 6; [0026] "article of footwear 10"; Claim 1 "plate extending from a first end in a forefoot region to a second end in a heel region" indicating toe end and heel end; Claim 1 "gap formed in a mid-foot region"; Claim 2 "medial side"; Claim 2 "lateral side"; [0027] "article of footwear 10...include a forefoot region 20, a mid-foot region 22, and a heel region 24"; [0026] "footwear 10 into a medial side 16 and a lateral side 18"), the article of footwear comprising:
an upper (see Figs. 1, 6; [0026] "article of footwear 10 includes an upper 100");
a sole structure coupled to the upper and defining a ground-engaging surface of the article of footwear ([0031] "sole structure 200 includes a midsole 202…and an outsole 204 configured to provide a ground-engaging surface to the article of footwear 10…midsole 202 includes…plate 206, a forefoot cushioning element 208, a heel cushioning element 210"; wherein Fahmi teaches coupling inasmuch as applicant specification defines the term), the sole structure including:
a first cushioning member (210) directly coupled to the upper in the heel region (see Figs. 1, 3,6 for directly coupled to 100; [0031] "heel cushioning element 210", wherein Fahmi teaches direct coupling inasmuch as applicant specification defines the term);
wherein a toemost end of the first cushioning member is in the midfoot region and a heelmost end of the first cushioning member defines a heelmost end of the sole structure (see Fig. 6 for FIRST 210, labeled in Fig. 1),
a second cushioning member (208) directly coupled to the upper in the forefoot region (see Figs. 1, 3, 6 for directly coupled to 100; [0031] "forefoot cushioning element 208"; wherein Fahmi teaches direct coupling inasmuch as applicant specification defines the term),
wherein a toemost end of the second cushioning member is in the forefoot region and a heelmost end of the second cushioning member is in the midfoot region (see Fig. 6, labeled in Fig. 1), and
a plate configured as a unitary plate that includes (see Figs. 3, 6; 0031] "rigid or semi-rigid plate 206"; [0032] "plate 206 extends from…forefoot region 20"; Claim 1);
a substantially planar portion coupled to the first cushioning member (for portion-- see Fig. 6, labeled in Fig. 1; see Fig. 6 for 206 at 210 substantially planar, labeled in Fig. 1; for coupled-- see Figs. 1, 3, 6 for coupled to first cushion 210; wherein Fahmi teaches coupling inasmuch as applicant specification defines the term; furthermore, Claim 1 "attached" for the plate to cushioning members; [0047] "heel cushioning element 210 is attached to a bottom surface of the plate 206"),
an anterior curved portion coupled to the second cushioning member (for portion-- see Fig. 6 for 206 at 208 coupled and curved, labeled in Fig. 1; for coupled-- see Figs. 1, 3, 6 for coupled to second cushion 208; wherein Fahmi teaches coupling inasmuch as applicant specification defines the term; furthermore, Claim 1 "attached" for the plate to cushioning members; [0045] "forefoot cushioning element 208 is attached to a bottom surface of the plate 206");
and a posterior curved portion extending between the substantially planar portion and the anterior curved portion (for portion-- see Fig. 6 for curved 206 in gap, labeled in Fig. 1),
the posterior curved portion is positioned in a gap that is defined between the first cushioning member and the second cushioning member (see Fig. 6 for 206 in gap, labeled in Fig. 1).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fahmi et al (USPN 11737509), herein Fahmi (disclosure from the provisional application 62/945,826 utilized herein), in view of Long et al (US Publication 2011/0203137), herein Long.
Regarding Claim 18, Fahmi teaches all the claimed limitations as discussed above in Claim 11.
Fahmi does not explicitly teach wherein the plate is spaced from the upper at the gap so that there is an absence of material of the sole structure between the plate and the upper.
However, Fahmi teaches a PEBAX plate at a mid-foot gap is in the context of athletic wear (see Figs. 1, 6; [0032] “plate 206 is at least partially formed of an elastomeric material such as…polyether block amide (PEBA) (e.g., PEBAX…)”; Claim 1 “first gap formed in a mid-foot region”; [0005] "athletes... footwear that is optimized for cushioning ….support…concurrently").
Long teaches wherein a PEBAX plate is spaced from the upper at the (mid-foot) gap so that there is an absence of material of the sole structure between the plate and the upper in athletic wear (see Fig. 1; [0053] "with a structural connection between the forefoot and heel portions of the sole, the article can allow some independent movement between the forefoot and heel portion of the sole while still providing some structural support that may limit stress on an arch portion of a foot"; [0056] "medial arch member 126 and lateral arch member 127 may comprise a single arch member 180"; [0065] "intermediate portion 163 and intermediate portion 173 are...spaced apart from upper 102"; [0040] "article of footwear 100, in the form of a dance shoe...any article of footwear including, but not limited to, sneakers, soccer shoes, football shoes, rugby shoes, baseball shoes as well as other kinds of shoes”, wherein 180 is of the sole structure, and the intermediate portions have the spacing at a mid-foot gap/arch portion; [0057] “medial arch member 126 and lateral arch member 127 may be constructed from…polyester block amide (PEBAX)”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Fahmi’s with at least the intermediate portions as taught by Long in order to provide support while limiting stress at arch ([0053]), as known to do so especially in the same art of endeavor as athletic footwear.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and can be used to formulate a rejection if necessary: Flannery et al (USPN 8479417), Riggs (USPN 4638577), Rosenbaum (USPN 7946060), Worobets et al (US Publication 2018/0116335), Oleson (USPN 12426672) with provisional 62/894,653; Harmon-Weiss et al (USPN 6253466) directed to flex lines; Lim (US Publication 2020/0163407), Cross (USPN 11930884) with provisional 63/001,370; del Biondi (US Publication 2019/0104805), Sato et al (USPN 9936765) directed to first/second cushioning members with a plate and gap; Horacek (USPN 9398785), Farina et al (USPN 10842224), Chambers et al (USPN 11006695) directed to plate shape;
The prior art also made of record and not relied upon is considered pertinent to applicant's disclosure: Kanematsu et al (US Publication 2024/0081475); Girard et al (USPN 12016422), Bonin (US Publication 2025/0040665), Chang et al (US Publication 2025/0185754) directed to first/second cushioning member with a plate and gap.
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/GRACE HUANG/Primary Examiner, Art Unit 3732
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