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 with traverse of Species D in the reply filed on 05/20/2026 is acknowledged. The traversal is on the ground(s) that there is not a burden to search species A, B, and D because they all have two separate support plates. This is not found persuasive because while the searches may overlap, the search would be burdensome and longer because the Examiner would need to search for each distinct invention or variation. Furthermore, the search is only part of the examination process. MPEP § 803 states that "if the search and examination of all claims in an application can be made without serious burden" (emphasis added). The examination of the application would be burdensome because the examiner would be required to apply art and rejections to the additional claims directed toward each distinct and different species.
The requirement is still deemed proper and is therefore made FINAL.
Claims 15-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species (species C, having connected first and second support plates), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/20/2026.
Claim Objections
Applicant is advised that should claim 4 be found allowable, claim 5 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 2 is objected to because of the following informalities: “said first end” in lines 1-2 should read “a first end” as a first end has not yet been recited. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: “said second thickness are the different” should read “said second thickness are different”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 7 and 8 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.
Claim 7 recites the limitation "a first channel" and “a second channel” in line 2 of the claim. Claim 1, from which Claim 7 depends, recites “a first channel” and “a second channel” in lines 4 and 6, respectively. It is not clear if Claim 7 is referring to the same first and second channels, or if Claim 7 is referring to different first and second channels. For purposes of examination, the first and second channels of Claim 7 will be interpreted as referring to the same first and second channels as recited in Claim 1, as the instant specification appears to teach only one first and second channel.
Claim 8 depends from Claim 7 and is likewise rejected due to dependency.
Claim 8 recites the limitation “wherein a central area of at least one of said first channel and said second channel includes a cavity that is greater than a thickness of said at least one of said first channel and said second channel” which renders the claim indefinite. It is not clear how or what dimension of the cavity is being recited as “greater” than a thickness of the first or second channel. Further, Claim 8 appears to be reciting the cavity as being a part of the channel, so it is not clear how the cavity can be a part of the channel but also greater than the channel in any capacity. For purposes of examination, any dimension of the cavity that is greater than a thickness of the channel spaced from the cavity will be considered as meeting the claimed limitation. Examiner respectfully suggests amending the claim to clarify the relationship between the cavity and channel so as to resolve the indefiniteness.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7 and 8 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 7 recites the limitation “wherein said sole includes a first channel on said medial side and a second channel on said lateral side, and wherein said first plate member is located in said first channel and said second plate member is located in said second channel.” Claim 1, from which Claim 7 depends, recites “a first channel formed in said sole on said medial side,” “a second channel formed in said sole on said lateral side,” “a first plate member positioned in said first channel on the medial side of the sole,” and “a second plate member positioned in said second channel on the lateral side of the sole.” As there is no material difference between the first and second plate members being “located” and “positioned” in the respective channels, Claim 7 is considered as considered as failing to further limit the subject matter of Claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 8 depends from Claim 7 and is likewise rejected due to dependency.
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) 1-7 and 9-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Giese et al. (US 5572805) in view of Auger et al. (US 6973746).
Regarding Claim 1, Giese et al. teaches a sole (see annotated Fig.) having a forefoot portion (see annotated Fig.), a heel portion (see annotated Fig.), a medial side (see annotated Fig.) and a lateral side (see annotated Fig.); a first channel (see annotated Fig.) formed in said sole on said medial side, said first channel having a plurality of first sides and a second channel (see annotated Fig.) formed in said sole on said lateral side said second channel having a plurality of second sides (said first and second channels are shown in annotated fig. 103, the channels being formed around the first and second plate members (as claimed below) and having a plurality of first and second sides, respectively, and as col. 11 ll. 56-58 discloses “stabilizer bars 23 extend longitudinally within the shoe bottom,” the first and second channels are obviously also formed in the sole on their respective sides); a first plate member (see annotated Fig.) positioned in said first channel on the medial side of the sole (annotated fig. 100 shows the first plate member being positioned in said first channel on the medial side of the sole), said first plate member having a first length (annotated fig. 100 shoes the first plate member having a first length), at least a portion (see annotated Fig.) of said first plate member being spaced from all of said first sides of said first channel (annotated fig. 100 shows a portion of the first plate member being located entirely within the first plate member and spaced from the outer edges of the first plate member and therein being spaced from all of the first sides of the first channel); and a second plate member (see annotated Fig.) positioned in said second channel on the lateral side of the sole (annotated fig. 100 shows the second plate member being positioned in said second channel on the lateral side of the sole), said second plate member being separate from said first plate member and having a second length (annotated fig. 100 shows the second plate member being separate from the first plate member and having a second length), at least a portion (see annotated Fig.) of said second plate member being spaced from all of said second sides of said second channel (annotated fig. 100 shows a portion of the second plate member being located entirely within the second plate member and spaced from the outer edges of the second plate member and therein being spaced from all of the second sides of the second channel).
Giese does not teach an article of footwear comprising the sole.
Attention is drawn to Auger et al., which teaches an analogous article of footwear. Auger et al. teaches an article of footwear (10) comprising: a sole (14, 16) having a forefoot portion (32), a heel portion (28), a medial side and a lateral side (col. 3 ll. 53-54 discloses “Extending across cleat assembly 16 from the lateral to medial sides,” therein the sole obviously has a medial and lateral side); a first channel (see Fig. 11) formed in said sole on said medial side; a second channel (see Fig. 10) formed in said sole on said lateral side (figs. 7, 11, and 10 show the first and second channels, respectively, formed in each of the medial and lateral side by the outsole (16, which includes structure 54)); a first plate member (48) positioned in said first channel on the medial side of the sole (fig. 11 shows the first plate member (48) positioned within the first channel on the medial side of the sole), said first plate member having a first length, at least a portion (see annotated Fig.) of said first plate member being spaced from all of said first sides of said first channel (annotated fig. 100 shows a portion of the first plate member being located entirely within the first plate member and spaced from the outer edges of the first plate member and therein being spaced from all of the first sides of the first channel); and a second plate member (50) positioned in said second channel on the lateral side of the sole (fig. 10 shows the second plate member (50) positioned in the second channel on the lateral side of the sole), said second plate member being separate from said first plate member and having a second length (fig. 9 shows the first plate member (48) having a first length and disposed on and in contact with the medial side of the sole and the second plate member (50) having a second length and being disposed on and in contact with the lateral side of the sole and separate from the first plate member; col. 4 ll. 33 discloses “medial support bar 48, lateral support bar 50”), at least a portion (see annotated Fig.) of said second plate member being spaced from all of said second sides of said second channel (annotated fig. 100 shows a portion of the second plate member being located entirely within the second plate member and spaced from the outer edges of the second plate member and therein being spaced from all of the second sides of the second channel).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Giese et al. to include the teachings of Auger et al. such that the sole is comprised in an article of footwear as it would have been obvious that a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that the product was not of innovation but of ordinary skill in and common sense. In this instance, the fact that a combination was obvious to try might show that it was obvious under 35 USC § 103. In the instant case, one has good reason to pursue the option of using a sole in an article of footwear with a reasonable expectation of success as Giese et al. refers to the sole as a “shoe sole” or “shoe bottom” (See title, abstract).
Regarding Claim 2, Giese teaches all of the limitations of the article of footwear of Claim 1, as discussed in the rejections above. Giese further teaches wherein said first end of said first plate member has a first plate width (see annotated Fig.) and a corresponding first end of said first channel has a first channel width (annotated fig. 100 shows the first plate member and the corresponding portion of the first channel having a first channel width at the first end), and said first plate width and said first channel width are each greater than a width of each of said second plate member and said second channel (see annotated Fig.) (annotated fig. 100 shows the first plate and channel width being greater than the width of the second plate member and channel).
Regarding Claim 3, modified Giese et al. teaches all of the limitations of the article of footwear of Claim 1, as discussed in the rejections above. Giese et al. further teaches wherein said first plate member (see annotated Fig.) extends from said forefoot portion (see annotated Fig.) to said heel portion (see annotated Fig.) (annotated fig. 100 shows the first plate member extending from the forefoot portion to the heel portion).
Regarding Claim 4, modified Giese et al. teaches all of the limitations of the article of footwear of Claim 1, as discussed in the rejections above. Giese et al. further teaches wherein said second plate member (see annotated Fig.) extends from said forefoot portion (see annotated Fig.) to said heel portion (see annotated Fig.) (annotated fig. 100 shows the second plate member extending from the forefoot portion to the heel portion).
Regarding Claim 5, modified Giese et al. teaches all of the limitations of the article of footwear of Claim 1, as discussed in the rejections above. Giese et al. further teaches wherein said second plate member (see annotated Fig.) extends from said forefoot portion (see annotated Fig.) to said heel portion (see annotated Fig.) (annotated fig. 100 shows the second plate member extending from the forefoot portion to the heel portion).
Regarding Claim 6, modified Giese et al. teaches all of the limitations of the article of footwear of Claim 1, as discussed in the rejections above. Giese et al. further teaches wherein at least one of said first plate member (see annotated Fig.) and said second plate member (see annotated Fig.) extends from said forefoot portion (see annotated Fig.) to a midfoot portion (see annotated Fig.) of said sole (annotated fig. 100 shows the first and second plate members extending from the forefoot portion to the midfoot portion).
Regarding Claim 7 in view of the indefiniteness as explained above, modified Giese et al. teaches all of the limitations of the article of footwear of Claim 1, as discussed in the rejections above. Giese et al. further teaches wherein said sole includes a first channel (see annotated Fig.) on said medial side and a second channel (see annotated Fig.) on said lateral side, and wherein said first plate member is located in said first channel and said second plate member is located in said second channel (said first and second channels are shown in annotated fig. 103 on their respective sides of the sole structure, fig. 103 further shows the first and second plate members located in their respective channels as claimed).
Regarding Claim 9, modified Giese et al. teaches all of the limitations of the article of footwear of Claim 1, as discussed in the rejections above. Giese et al. further teaches wherein at least one of said first plate member (see annotated Fig.) and said second plate member (see annotated Fig.) includes at least one lateral curve (annotated fig. 100 shows the first and second plate members including a lateral curve).
Regarding Claim 10, modified Giese et al. teaches all of the limitations of the article of footwear of Claim 1, as discussed in the rejections above. Giese et al. further teaches wherein at least one of said first plate member (see annotated Fig.) and said second plate member (see annotated Fig.) includes portions that are at different heights (annotated fig. 103 shows the second plate member having portions that are at different heights).
Regarding Claim 11, modified Giese et al. teaches all of the limitations of the article of footwear of Claim 1, as discussed in the rejections above. Giese et al. further teaches wherein said first plate member (see annotated Fig.) includes a first thickness (see annotated Fig.) and said second plate member (see annotated Fig.) includes a second thickness (see annotated Fig.).
Giese et al does not explicitly disclose wherein said first thickness and said second thickness are the same, however annotated fig. 103 appears to shows the first and second plate members having a first and second thickness, respectively, and the thicknesses appear to be the same.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Giese et al. such that the first and second plate members have the same thickness as it is a change in proportion that would not result in change in function, unexpected result, or synergistic effect. In support of this conclusion of obviousness it is noted that in Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (MPEP §2144.04 IV).
Regarding Claim 12, modified Giese et al. teaches all of the limitations of the article of footwear of Claim 1, as discussed in the rejections above. Giese et al. further teaches wherein said first plate member (see annotated Fig.) includes a first thickness (see annotated Fig.) and said second plate member (see annotated Fig.) includes a second thickness (see annotated Fig.), and wherein said first thickness and said second thickness are different (annotated fig. 103 shows the first and second plate members having a first and second thickness, respectively, and the thicknesses being different).
Regarding Claim 13, modified Giese et al. teaches all of the limitations of the article of footwear of Claim 1, as discussed in the rejections above. Giese et al. further teaches wherein said first plate member (see annotated Fig.) and said second plate member (see annotated Fig.) are spaced from each other (annotated fig. 100 shows the first and second plate members being spaced apart from one another).
Regarding Claim 14, modified Giese et al. teaches all of the limitations of the article of footwear of Claim 1, as discussed in the rejections above. Giese et al. further teaches wherein at least one of said first plate member (see annotated Fig.) and said second plate member (see annotated Fig.) includes at least one of a vertically oriented concave curve and a vertically oriented convex curve (annotated fig. 108 shows the plate member having a vertically oriented concave curve and a vertically oriented convex curve. Examiner notes that fig. 108 is referring to a different embodiment of a sole than that shown in fig. 100, however further notes that col. 12 ll. 3-4 recites “stabilizer bars 23 which have two different shapes. The bars may be contoured 23A,” wherein as fig. 108 is referring to the same stabilizing bars (or plate members) (23) as shown in fig. 100, at least one of the first or second plate members can obviously have at least one of a vertically oriented concave curve and a vertically oriented convex curve).
PNG
media_image1.png
439
911
media_image1.png
Greyscale
PNG
media_image2.png
281
420
media_image2.png
Greyscale
PNG
media_image3.png
263
343
media_image3.png
Greyscale
PNG
media_image4.png
308
269
media_image4.png
Greyscale
PNG
media_image5.png
259
366
media_image5.png
Greyscale
PNG
media_image6.png
352
799
media_image6.png
Greyscale
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Giese et al. (US 5572805) in view of Auger et al. (US 6973746), and further in view of Iuchi et al. (US 2019/0289961).
Regarding Claim 8 in view of the indefiniteness as explained above, modified Giese et al. teaches all of the limitations of the article of footwear of Claim 1, as discussed in the rejections above.
Giese et al. does not teach wherein a central area of at least one of said first channel and said second channel includes a cavity that is greater than a thickness of said at least one of said first channel and said second channel.
Attention is drawn to Iuchi, which teaches an analogous sole structure for an article of footwear. Iuchi teaches a sole (1) having a forefoot portion (F), a heel portion (H), a medial side and a lateral side (fig. 1 shows the sole having a medial side and a lateral side); a first channel (see annotated Fig.) formed in said sole, said first channel having a plurality of first sides (Annotated fig. 11 shows the first channel being formed in the sole and having two sides); a first plate member (4) positioned in said first channel (annotated fig. 11 shows the first channel being formed in the sole), said first plate member having a first length, said first plate member being spaced from all of said first sides of said first channel (fig. 11 shows the first plate member (4) having a first length and being spaced from all sides of the first channel, as best understood in view of the indefiniteness as explained above). Iuchi et al. further teaches wherein a central area of said first channel includes a cavity (24, 34) that is greater than a thickness of said first channel (fig.11 shows the cavity (24, 34) having a thickness greater than a thickness of the first plate member (4) and therefore greater than a thickness of the first channel spaced apart from the cavity (see indefiniteness rejection above), as the first channel is approximately the same size as the first plate member elsewhere, and being placed at the central area of the channel).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Giese et al. to include the teachings of Iuchi et al. such that a central area of at least one of said first channel and second channel includes a cavity that is greater than a thickness of said at least one of said first channel and said second channel, so as to allow the cavities to function as cushioning holes (paragraph [0073], “since the lower surface 2B of the upper midsole 2 has a plurality of recesses 23, 24, 25 and the upper surface 3A of the lower midsole 3 has a plurality of recesses 33, 34, 35, those recesses function as cushioning holes at the time of a heel impact, thus further improving cushioning properties of the heel central portion.”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HALEY A SMITH whose telephone number is (571)272-6597. The examiner can normally be reached Monday - Thursday 7:00 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached at (571)272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HALEY A SMITH/Primary Examiner, Art Unit 3732
