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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06-26-2025 is acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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) 1-10 and 14-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Duffy et al. (2021/0392992).
Regarding claim 1, Duffy discloses a golf shoe, comprising: an upper; and a sole assembly connected to the upper (figs 1-18), the sole assembly comprising
a midsole (member 28 and 32) and an outsole (member 25) comprising a forefoot region, a midfoot region, and a rearfoot region, wherein the outsole comprises a first traction zone located in the forefoot region or the midfoot region of the outsole and a second traction zone located in the midfoot region or the rearfoot region of the outsole, wherein the first traction zone and the second traction zone have a wave-like configuration (figs 2, 13, and 18); and
a reinforcement structure (member 30) comprising a bottom loaded U-shaped support frame (figs 3-6 and 14-17) positioned between the midsole and the outsole.
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Regarding claims 2-3, Duffy discloses the wave-like configuration is periodic or the wave-like configuration is symmetrical (fig 13 annotated above).
Regarding claims 4-5, Duffy discloses the wave-like configuration is aperiodic or the wave-like configuration is asymmetrical (fig 13 annotated above).
Regarding claim 6, Duffy discloses a portion or a section of the first traction zone or the second traction zone is configured to extend upwards and/or along a medial side or a lateral side of the outsole (figs 2, 13, and 18).
Regarding claim 7, Duffy discloses said portion or section of the first traction zone or the second traction zone has a periodic wave-like configuration (fig 13 annotated above).
Regarding claim 8, Duffy discloses said portion or section of the first traction zone or the second traction zone has a symmetrical wave-like configuration (fig 13 annotated above).
Regarding claim 9, Duffy discloses said portion or section of the first traction zone or the second traction zone has an aperiodic wave-like configuration (fig 13 annotated above).
Regarding claim 10, Duffy discloses said portion or section of the first traction zone or the second traction zone has an asymmetrical wave-like configuration (fig 13 annotated above).
Regarding claim 14, Duffy discloses the outsole comprises a plurality of flex zones (fig 13 annotated above).
Regarding claim 15, Duffy discloses the plurality of flex zones are positioned and oriented to separate or divide different regions or subregions of the first traction zone and the second traction zone to yield the wave-like configuration (fig 13 annotated above).
Regarding claim 16, Duffy discloses the plurality of flex zones are configured to extend between adjacent cleats or cleat receptacles provided on the outsole (figs 3-6 and 14-17)
Regarding claim 17, Duffy discloses a portion of the reinforcement structure is integrated with one or more traction zones of the outsole (figs 2-6 and 13-17).
Regarding claim 18, Duffy discloses a portion of the reinforcement structure is disposed directly adjacent to one or more traction zones of the outsole (figs 2-6 and 13-17).
Regarding claim 19, Duffy discloses a portion of the reinforcement structure is exposed or visible through the midsole or the outsole (figs 2-6 and 13-17).
Regarding claim 20, Duffy discloses the reinforcement structure comprises a medial support or a lateral support extending upwards and/or along a medial side or a lateral side of the midsole or the outsole (figs 2-6 and 13-17).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duffy et al. (2021/0392992) as applied to claim 1 above, and further in view of James (2012/0278999).
Regarding claim 11, Duffy teaches all limitation of the claim except the first traction zone comprises a first material and the second traction zone comprises a second material that is different than the first material.
James teaches an outsole having different zone with different material (para 0006 and 0025).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to modify the outsole of Duffy by using the different material, as taught by James, in order to provide different resistance or resilient deformation.
Regarding claim 12, the modified shoe Duffy-James discloses the first material comprises a TPU-based material and the second material comprises a rubber-based material (Duffy, para 0063).
Regarding claim 13, the modified shoe Duffy-James discloses the first material comprises a rubber-based material and the second material comprises a TPU-based material (Duffy, para 0063).
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.
Claim 1 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-10 of U.S. Patent No. (12,290,142). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim essentially the same elements such as an footwear comprising an upper, a midsole, an outsole, and a U-shape wherein the U-shape is between the midsole and outsole.
Conclusion
The prior art made of record and not relied upon, is listed on the attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BAO-THIEU L NGUYEN whose telephone number is (571)270-0476. The examiner can normally be reached M-F 7am-3pm.
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BAO-THIEU L. NGUYEN
Primary Examiner
Art Unit 3732
/BAO-THIEU L NGUYEN/Primary Examiner, Art Unit 3732