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 without traverse of Group I, claims 1-12, in the reply filed on April 6, 2026 is acknowledged. Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 11 and 12 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.
As to claim 11, the claim recites “a midsole”. It is not clear whether this is referring back to the midsole of claim 1 (i.e. it should then be presented as “the midsole”) or whether another portion of the midsole or another part of the shoe is intended. Appropriate correction and clarification are required.
Claim 12 is rejected as a dependent claim.
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.
Claims 1-8, 10 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Krajcir (US 5,667,738).
Regarding claim 1, Krajcir teaches a method for adapting a property of a shoe (Abstract; col. 1, lines 12-18; col. 2, lines 48-61) the method comprising placing the shoe (10) in a sealable chamber (Figure 1 (20) (23) (27) (30) (32); col. 6, line 29-col. 7, line 5); sealing the sealable chamber (Figure 1; col. 3, lines 47-60; col. 6, lines 55-60 – tightly closed mold cavity); applying a pressurized gas to the shoe for a time period, such that molecules of the gas are migrated into a midsole of the shoe (Figures 3 and 5 (34) (36) (40) (42); col. 3, lines 11-35; col. 4, lines 47-54; col. 7, lines 29-47; sole (18) reads upon the claimed midsole under a reasonable interpretation – col. 6, lines 38-44); and relieving at least a part of the gas from the chamber (venting of the hollow chamber in the heel also results in venting gas from the mold and/or removing the boot from the mold/chamber also relieves pressure: col. 3, lines col. 7, lines 48-col. 8, line 7; Figure 5 (50): note: the “chamber” in Krajcir refers to the hollow portion (42) formed in the heel and is not the same as the claimed chamber; as set forth above, the mold/molding structure in Krajcir is relied upon as corresponding with the claimed “sealable chamber”).
This rejection applies a broad reasonable interpretation to the scope of the claim. For example, the claim does not explicitly require that an otherwise finished shoe, which already contains a foam midsole, is placed completely within the interior of a sealable chamber for the claimed treatment of the shoe with pressurized gas in the sealed chamber.
As to claim 2, Krajcir performs the same claimed process steps on the same claimed materials. As such, the same claimed effects and physical properties are realized by the practice of the method of Krajcir.
As to claims 3-6, Krajcir teaches the corresponding midsole (18) includes a polyurethane foam material, which will necessarily be either an open or closed cell foam and which reads upon a block foam (col. 6, lines 38-44; col. 8, lines 8-32).
As to claim 7, Krajcir teaches the gas comprises air, which necessarily includes nitrogen and oxygen (col. 7, lines 6-10).
As to claim 8, Krajcir teaches the pressure of the compressed gas is in the range of 5-20 psi (col. 8, lines 18-24). This is less than “at most 10 bar”, which provides an upper limit, and is therefore within the claimed range (0-10 bar) based on the “or” language in the claim.
As to claim 10, the time period in Krajcir is less than 200 hours (col. 8, lines 9-24). Note: the claim requires “and/or” for the time period. Therefore, relying upon the “or”, any time less than 200 hours is within the scope of the claim.
As to claim 11, Krajcir forms indentations in the sole (18)/midsole (Figures 3 and 5 (42) (44)).
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 9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Krajcir (US 5,667,738), as applied to claims 1-8, 10 and 11 above.
As to claim 9, Krajcir suggests the properties of the utilized materials, including temperature, will impact the final properties/resilience of the shoe (col. 8, lines 8-38). Selecting an appropriate temperature for the gas is therefore understood to be a routine expedient that would have been optimized as a result effective variable. 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 Krajcir.
As to claim 12, Krajcir teaches the size of the corresponding indentations (Figures 3 and 5 (44) – formed by/around (34); (42)) are selected to produce the desired properties of the shoe (col. 4, lines 60-67; col. 7, lines 28-35; col. 7, lines 56-col. 8, line 24). As such, size of the corresponding indentations are disclosed as being a result effective variable in the process of Krajcir and would have been readily optimized as a routine expedient.
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 the 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]). 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 the entire 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).
Conclusion
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.
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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
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