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 .
Response to Amendment
Applicant’s amendment to the claims filed August 25, 2026 has been entered. Claims 1 and 11 are currently amended. Claims 13-20 remain withdrawn from further consideration. Claims 1-12 are under examination.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Shelare et al. (US 3,005,272) in view of either one of Farris et al. (US 2016/0122493) or Miller et al. (US 2008/0274346).
Regarding claim 1, Shelare et al. teach a method for producing a pneumatic shoe comprising placing plastic material which forms the midsole/non-ripple ply (13) of a shoe in a sealable chamber/autoclave and applying pressurized gas to the plastic material for a time period such that molecules of gas are migrated into the midsole/non-ripple ply (13) material and subsequently relieving the gas from the chamber (e.g. to remove the material from the autoclave the pressure will be relieved) (col. 1, lines 7-12; col. 1, lines 56-65; col. 1, line 70-col. 2, lines 14; col. 2, lines 30-65; Figures 3, 4, 5, 6 and 8). Shelare et al. teach the gas may be migrated into the plastic during formation of the article (col 2, lines 47-66), but do not more explicitly teach that it is a complete shoe itself and not just the component that forms the midsole of the shoe, is placed within the sealed container/autoclave.
However, Farris et al. teach an analogous method for incorporating gas into a component of a shoe (e.g. a sole/midsole) (paragraphs [0011]-[0019], [0023]-[0026], [0040]) and further teach that this process can be done with or without other structural portions of the article/shoe being present (paragraphs [0045] and [0046]), thereby suggesting and making clear that the components together can form a complete shoe (paragraph [0011] – “portions other than…”; paragraph [0019]: “portions other than…may be interior or exterior portions” and as set forth in paragraph [0019], the article/member of Farris can be the midsole and other components/portions include the outsole, upper, and any other component of the shoe – “In various embodiments, the molded article is a midsole for an article of footwear…A midsole should also be able to be bonded to an outsole, an upper, or any other components…in making an article of footwear”) . Also, Miller et al. teach migrating gas into an otherwise finished article in a pressurized container/chamber (Abstract; Figure 2; Figure 8; paragraph [0133])
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Shelare et al. and either one of Farris et al or Miller et al. and to have placed a complete shoe of Shelare et al. into the sealable chamber and then to have sealed chamber for gas treatment as claimed, as suggested by the references, for the purpose, as suggested by the references, of effectively incorporating the gas into the midsole/non-ripple ply (13) in a suitable alternative and equivalent manner. Shelare et al. provide general teaching regarding the desire to incorporate gas into the corresponding midsole of a shoe. The disclosure of Shelare et al. is not necessarily limited to the manner in which this is accomplished. Each of the secondary references provide additional teaching and suggestion wherein analogous processes for incorporating gas into analogous materials is known to be done on the complete article (e.g. the portion that is to be impregnated with gas and other structural portions or components, if any, of the article/product). In combination, the prior art renders prima facie obvious the claim of placing the complete shoe itself into the pressurized chamber/autoclave of Shelare et al. to incorporate the gas as claimed.
As to claim 2, the combination teaches and suggests performing the same claimed and disclosed steps on the same claimed and disclosed materials. It follows from a technical and rational basis that the same claimed effects and physical properties would be realized from performing the process.
As to claims 3-6, Shelare et al. teach the material may be sponge/foam rubber (col. 1, lines 71-col. 2, line 7). This material reads upon the claimed open or closed foam and the claimed block or bead foam. Selecting the material of the foam is understood to be a routine expedient. Further, Farris et al., as cited above, teach an analogous and applicable midsole foam material can be materials as claimed (e.g. polyurethane). One having ordinary skill in the art would have found it prima facie obvious to have utilized a polyurethane foam as the midsole of Shelare et al., as suggested by Farris et al., for the purpose, as suggested by the references of utilizing a material known in the art to provide desired midsole properties.
As to claim 7, Shelare et al. teach the gas comprises nitrogen, oxygen or air (col. 1, lines 7-12; col. 1, lines 57-65; col. 2, lines 8-15).
As to claim 8, Shelare et al. teach the gas pressure is within the claimed range (col. 2, lines 8-15).
As to claim 9, Shelare et al. teach applying the nitrogen in a manner sufficient for it to be incorporated into the plastic. Selecting an appropriate temperature for the gas is therefore understood to be a routine expedient that would have been optimized to effectively incorporate the gas. This is reasonably suggested by each of the references as cited above and the reason to combine the references is to ensure sufficient impregnation of the gas. Further, the low end of the range is sufficiently close to ambient temperature and an ambient temperature for the air is also reasonably suggested and rendered prima facie obvious by the teaching of Shelare et al.
As to claim 10, the teaching of Shelare et al. and the secondary references all render a time of less than 200 hours prima facie obvious. The reason to combine the references is the same as that set forth above.
As to claims 11 and 12, the gas of Shelare et al. introduces indentations in the midsole and the size is determined as a routine expedient (col. 1, lines 57-65; Figures 3, 5, 6, 7, 8).
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Klein (US 3,517,645) in view of Swigart et al. (US 2023/0309646) and Chan et al. (US 2015/0030763).
Regarding claim 1, Klein teaches a method of adapting a property of a shoe comprising placing a complete shoe in an enclosing spraying cabinet/chamber (Abstract), applying a pressurized gas to the sole of the shoe while in the spraying cabinet (col. 1, lines 25-col. 2, line 72;col. 3, lines 47-74; col. 5, line 70-col. 6, line 54; Figure 1 and 6-16 (4) (5) (6)) and implicitly or necessarily removing the treated shoe from the enclosed cabinet when the process is complete.
While the language of Klein arguably implies a sealable and sealed cabinet/chamber, Klein does not explicitly teach the enclosed cabinet is sealed as claimed during the application/treatment (which includes spray finishing the leather portion of the shoe while also providing pressurized air to the interior and sole area of the shoe). However, Chan et al. (paragraph [0002]) teach an analogous method wherein it is more explicitly taught that spray cabinets/booths are sealed during the application/treatment step.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Klein with Chan et al. and to have utilized a sealed chamber in the method of Klein, as suggested by Chan et al., for the purpose, as suggested by the references, of reducing emissions and exposure and facilitating the effective and productive treatment of the spray finished shoe.
Klein does not teach the complete shoe includes a midsole as claimed. However, Swigart et al. teach an analogous method and shoe wherein the upper of the complete is made of leather (paragraph [0052]) and includes a midsole made of a foam material (paragraphs [0006], [0052], [0057], [0060], [0117], [0121], and [0131]).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Klein and Swigart et al. and to have utilized the shoe of Swigart et al., as the shoe of Klein, for the purpose, as suggested by the references, of providing a finished/treated shoe that also has the structure, aesthetics, and properties set forth by Swigart et al.
In the combination, the shoe of Swigart et al. is treated in the enclosed spray cabinet/ chamber of Klein. As the leather upper of the complete shoe is being finished/dressed, pressurized air is being directed at the sole, including the midsole of the shoe, to keep the sole from being undesirably coated with the spray material. Since the same claimed and disclosed steps are being performed on the same claimed and disclosed materials in the same claimed and disclosed manner, it follows from a technical and rational basis that the same claimed effects and physical properties (e.g. molecules of gas/air/nitrogen/oxygen are migrated into the midsole) are realized by the practice of the combined method.
The disclosed midsole is a foam material and this is the material of the midsole relied upon in the combination. Further, pressures that are barely above atmospheric pressure are disclosed as being suitable in the disclosed and claimed method (e.g. simply above 1 bar, which generally corresponds with the meaning of the word “pressurized” in this context – i.e. atmospheric pressure is about 1 bar) and the claims do not require any minimum time period for treatment (e.g. even claim 10 only requires an upper limit as no explicit lower time limit is required based on “and/or” language). Further, the claims and the disclosure do not require any minimum amount of gas that migrates into the foam. As such, the weight of the evidence supports the conclusion that “molecules of the gas are migrated” into the (foam) midsole of the shoe to the extent required by the claim in the combined method.
As to claim 2, as set forth above, the combination performs the same claimed and disclosed steps on the same claimed and disclosed materials in the same claimed and disclosed manner. It follows from a technical and rational basis that the same claimed effects and physical properties (e.g. adapted elasticity) are realized by the practice of the combined method to the extent required by the claim.
As to claims 3-6, Swigart et al. teach and suggest foam materials as claimed (paragraphs [0006], [0052], [0057], [0060], [0117], [0121], and [0131]). The reason to combine the references is the same as that set forth above.
As to claims 7 and 8, Klein discloses compressed/pressurized air (col. 1, lines 25-col. 2, line 72;col. 3, lines 47-74; col. 5, line 70-col. 6, line 54), which teaches and suggests air, nitrogen, and/or oxygen at pressures of at least 1 bar.
As to claims 9 and 10, the method suggested by Klein is understood to reasonably suggest and render prima facie obvious a time period of less than 200 hours and the temperature of the compressed/pressurized air would have been readily determined, including to temperatures that are close to or reasonably include ambient temperatures based on the operating environment.
As to claims 11 and 12, the midsole of Swigart et al. is understood to disclose, suggest and render prima facie obvious indentations/shapes/configurations as claimed (as shown in Figures 1A-1C; 2A-2B, Figure 3C; Figures 4A-4B; Figure 4D; Figure 8 and Figures 19A-B with the corresponding descriptions of the figures and configurations of the corresponding midsole portion). The reason to combine the references is the same as that set forth above.
Response to Arguments
Applicant’s arguments filed August 25, 2026 have been fully considered. The amendment has overcome the previous section 112b rejection and the section 102 rejection based upon Krajcir. As such, the rejections have been withdrawn. Applicant’s arguments regarding the section 103 rejection based upon Shelare et al. in view of either one of Farris et al. or Miller have been fully considered, but they are not persuasive.
As to Farris et al., applicant argues that Farris et al. do not describe the “structural portion” used in combination with “the article” together form a completely formed product/shoe. This argument is not persuasive. As appears to be agreed upon, the disclosed “article” of Farris et al. relied upon in the rejection is the claimed midsole. Further, the examiner submits that the context of Farris et al. make clear that the other structural portions that can be used in combination with the article/midsole are all the other structural portions required to form a complete shoe (Abstract; paragraphs [0011], [0013], [0015], [0019], [0020], [0045], [0046] and [0048]). From this, the teaching of Farris et al. makes clear that the disclosed components combined together with the article can all be utilized and that these form a complete shoe (paragraph [0011] – “portions other than…”; paragraph [0019]: “portions other than…may be interior or exterior portions” and as further set forth in paragraph [0019], the article/member of Farris can be the midsole and other components/portions include the outsole, upper, and any other component of the shoe – “In various embodiments, the molded article is a midsole for an article of footwear…A midsole should also be able to be bonded to an outsole, an upper, or any other components…in making an article of footwear”. Further, “footwear tongues” and “footwear insoles” are also in view and clearly suggested as being applicable components/part of the article (paragraphs [0048] and claim 55).
As such, Farris et al. teach the structural components that may be used in addition to the midsole include “interior” and “exterior” portions of the shoes, and these include an “outsole”, “an upper”, and “any other components” (e.g. insole, tongue) of the shoe. As such, Farris et al. make clear to one having ordinary skill in the art that a complete shoe is in view. A shoe with the recited components (e.g. outsole, midsole, upper) is reasonably understood to be a complete shoe. Further, in addition to this combination of components, Farris et al. teach “any other components” may also be included (e.g. outsole, midsole, upper, insole, tongue, and “any other components” that may be required).
As to Miller et al., applicant argues that after the step of migrating gas into the article, Miller requires an additional heating step after the article is removed from the pressurized chamber and that this means the article was not “otherwise finished” when gas is migrated into it. This argument is not persuasive.
In the combination of Shelare with Miller the “complete shoe” that is in view is a shoe that has not had the air/gas of Shelare incorporated into it yet. The complete shoe is placed in the sealed chamber/autoclave of Shelare and Miller et al. provide a teaching and suggestion that gas/air can be incorporated not just into a portion of a to be further produced article, but the required portion of an otherwise complete structural article. In the combination as set forth above, the additional heating step of Miller is not explicitly relied upon. However, for the purposes of scope clarity, even if the combination reasonably suggests adding a shoe without migrated gas into the pressurized chamber and then performing a subsequent heating step outside the pressurized chamber as taught by Miller et al., this does not mean that the shoe was not “a complete shoe” when introduced into the chamber. It means that a complete shoe is added to the chamber, has gas migrated into the midsole of it, and then is heated in an additional step. It was still a “complete shoe”/”otherwise finished article” at the beginning and the migrating and heating steps are additional steps that treat or further modify the already complete shoe/otherwise finished article. Said more generally, the arguments are not commensurate in scope with the claim.
Further, in view of the amendment that now makes explicit that “a complete shoe” is necessarily the shoe that is treated as claimed, new grounds of rejection have been made as set forth above.
It is submitted the claims would need to be further amended to overcome the prima facie case. The examiner notes his availability to discuss the application via telephonic interview.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references disclose analogous treatment methods and should be considered prior to replying to this Office Action: Marker et al. (US 2023/0115442); Levsen et al. (US 9,669,123); Marker et al. (US 2016/0037865); and Dhaemers (US 6,134,806).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeff Wollschlager whose telephone number is (571)272-8937. The examiner can normally be reached M-F 7:00-3:30.
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, Christina Johnson can be reached at 571-272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742
