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 Species A (Figs. 1-7; claims 1-3 and 6-10) in the reply filed on February 24, 2026 is acknowledged. Claims 4 and 5 are withdrawn from further consideration, and an action on the merits follows regarding claims 1-3 and 6-10.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in JAPAN on July 26, 2024. It is noted, however, that applicant has not filed a certified copy of the JP2024-121030 application as required by 37 CFR 1.55.
Claim Objections
Claims 1, 2, 6, 7 and 10 are objected to because of the following informalities:
Claims 1, 2, 6 and 7: the language would be clearer if the phrase “configured of” is amended to recite “configured as”
Claim 1, lines 10 and 20
Claim 2, line 5
Claim 6, line 2
Claim 7, line 2
Claim 10, line 3: “a sole of the foot” should recite “the sole of the foot”, since claim 1 (from which claim 10 depends) already positively references “a sole of the foot”
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
Claim 1 (and claims 2, 3 and 6-10 at least due to dependency from claim 1) is 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.
Regarding claim 1, Applicant recites “a peripheral wall portion configured to cover a peripheral surface of the foot of the wearer by standing from a peripheral edge of the bottom wall portion” (emphasis added). The phrase “by standing” is confusing, absent further clarification. Is the foot of the wearer standing? Is the peripheral wall portion “standing” in some sense? Correction is required. For purposes of examination, the cited text is being interpreted as meaning the same thing as “a peripheral wall portion configured to cover a peripheral surface of the foot of the wearer, wherein the peripheral wall portion extends upward from a peripheral edge of the bottom wall portion”, as best as can be understood.
Regarding claim 2, Applicant recites “the portion of the first region and the portion of the second region excluding the cover portion”. Earlier in claim 2, Applicant recites “a portion of the first region and a portion of the second region are configured as the cover portion”. There is a situation where all of the first region and the second region are configured as the cover portion, wherein, in such instance, there would not definitively be a portion of the first and second regions that “excludes” the cover portion. Correction is required. Examiner suggests claim 2 recite “wherein a first portion of the first region and a first portion of the second region are configured as the cover portion, wherein a second portion of the first region and a second portion of the second region are configured as a portion excluding the cover portion, and the second portion of the first region and the second portion of the second region excluding the cover portion are each configured of a three-dimensional mesh structure body”, as one potential remedy.
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.
Claims 1-3, 6 and 8-10, as best as can be understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takashima et al. (hereinafter “Takashima”) (US 2021/0259364).
Regarding independent claim 1, Takashima discloses a footwear (see Figs. 1-5 which show a shoe footwear (¶ 0051)) comprising: a shell (the shell is constituted by the combination of part of the upper #2, the part being the quarter outer skin with a foamed resin cushion material interior of the quarter outer skin (¶ 0052), the counter #1, and the sole #4) including an insertion space inside the shell (the space designed to house the foot of the wearer of the shoe is an insertion space within the shell) and configured to receive a foot of a wearer (as noted above; Examiner notes the emphasized/italicized language is a statement of intended use that does not further structurally define the claimed invention in any patentably-distinguishing sense), the shell being made of an elastic material (the cushion material of foamed resin is elastic, at least to some degree, absent further distinguishing structural limitations regarding what constitutes an elastic material; the “flexible” upper #2 is a multi-layer fabric, wherein flexible fabric also has some degree of elasticity), and surrounding the insertion space (the upper #2 defines the shape that surrounds the insertion space for the foot), wherein the shell includes a bottom wall portion (the sole #4 is a bottom wall portion of the overall claimed shell; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)) configured to support a sole of the foot of the wearer (the sole #4 is arranged to be below a foot of the hypothetical wearer, to thereby support such a foot), and a peripheral wall portion configured to cover a peripheral surface of the foot of the wearer (the peripheral wall portion is constituted by the outer quarter skin, the cushion resin foam therewith and the counter #1, all of which are capable of covering a peripheral surface of the foot of the hypothetical wearer) by standing from a peripheral edge of the bottom wall portion (the combination of the outer quarter skin, the cushion resin foam therewith and the counter #1 extends upward from a peripheral edge of the sole #4 (i.e. bottom wall portion), as shown in Fig. 1), the peripheral wall portion has a first region that includes a bulging portion bulging toward the insertion space (the quarter outer skin and foamed resin cushion part of the upper #2 together define a bulging “portion” as part of an arbitrary first “region”, which bulges toward the insertion space (see Fig. 1(c) of Takashima, which shows an inwardly-bulging portion at the heel end); Examiner notes that the term "region" is very broad and merely means "any large, indefinite, and continuous part of a surface or space" (Defn. No. 1 of "Collins English Dictionary – Complete and Unabridged, 12th Edition 2014" entry via TheFreeDictionary.com)), and a second region that is adjacent to the first region (there is an arbitrary second “region’ that is “adjacent” the first region; Examiner notes that the term "adjacent" is very broad and merely means "close to; lying near". (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)), the bulging portion includes an easy-deformable portion configured of a three-dimensional mesh structure body (the bulging portion is made of a cushion foamed resin and the outer quarter skin, which is made of foam and fabric, both of which are at least types of a three-dimensional mesh structure (all solid objects are three-dimensional as having at least some measurable length, width and height dimensions)), the peripheral wall portion includes a cover portion (as noted above, the counter #1 is part of the peripheral wall portion; the counter has a cover portion) as a hard-deformable portion having higher rigidity than the easy-deformable portion (the counter is bonded to the outer surface of the upper #2, wherein the counter has a high flexural rigidity, such as a thermoplastic resin component of non-foamed material (¶0056-0057); ¶ 0005 also describes how the counter increases the rigidity of the upper, which indicates that the counter would have a higher rigidity than the foamed resin cushion and fabric of the upper #2), the cover portion being on a side opposite to a side on which the insertion space is located as viewed from the bulging portion (Fig. 1 shows that the counter #1 (which has the cover portion) is on the opposite side of the upper from where the foot insertion space is located, as viewed from the perspective of the bulging portion) and covering at least a portion of the bulging portion by being across the first region and the second region (Fig. 1 shows counter #1 to be across a large section of the heel end of the upper, which would be across both the arbitrarily-defined first and second regions), and at least a portion of the peripheral wall portion including the first region and the second region is configured of a single member (there is at least some arbitrary portion that is part of both the first and second regions that is configured of a “single member” (i.e. such as a portion of the outer quarter skin, a portion of the foamed resin cushion material or a portion of the counter #1), inasmuch as the claim has defined the portions and regions and the single member).
Regarding claim 2, Takashima discloses that a portion of the first region and a portion of the second region are configured as the cover portion (an arbitrary portion of the arbitrary first and second regions can be considered as including the counter #1, which has the cover portion), and the portion of the first region and the portion of the second region excluding the cover portion are each configured of a three-dimensional mesh structure body (the portion that is, for example, the outer quarter skin fabric, is a three dimensional mesh structure body, which excludes the counter #1).
Regarding claim 3, Takashima discloses that the cover portion is on an outer surface of the peripheral wall portion (see Fig. 1).
Regarding claim 6, Takashima discloses that the cover portion is configured of a solid structure (all parts of the footwear are made of solid structure materials, including the counter #1, which has the cover portion).
Regarding claim 8, Takashima discloses that the bottom wall portion has a ground contact surface (sole #4 is the bottom wall portion, as noted above; the sole #4 has a bottom, ground contact surface).
Regarding claim 9, Takashima discloses that the footwear further comprises: an upper body (quarter lining of an inner skin is “an upper body” (¶ 0052)) that is in the shell and includes an accommodating portion which is bag-shaped and has an opening portion configured to receive the foot of the wearer (the quarter lining inner skin is shaped like the inside of the upper #2, which is “bag-shaped” and has an opening at topline #20 configured to receive the foot; quarter lining inner skin is “in the shell” since it is interior of the foamed resin cushion layer), wherein the bulging portion is covered with the upper body (quarter lining inner skin covers the bulging portion from the perspective of inside the foot insertion space).
Regarding claim 10, Takashima discloses that the footwear further comprises: a sole body (an insole with a sock lining #7 is a sole body; ¶ 0053) that is above the bottom wall portion by being in the shell (see Fig. 1, which shows that sock lining #7 (which is on the insole) is above the sole #4 (i.e. bottom wall portion) and in the overall shell) and configured to support a sole of the foot of the wearer in cooperation with the bottom wall portion (the insole is capable of supporting the hypothetical foot in cooperation with the sole #4).
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 7, as best as can be understood, is rejected under 35 U.S.C. 103 as being unpatentable over Takashima as applied to claim 1 above, and further in view of VanWagnen et al. (hereinafter “VanWagnen”) (US 2019/0029369).
Regarding claim 7, Takashima teaches all the limitations of claim 1, as set forth above, but does not teach that the shell is configured of a single additively manufactured product which is manufactured by a three-dimensional additive manufacturing method.
VanWagnen teaches an article of footwear having a 3D-printed fabric, wherein the fabric can be formed via additive 3D manufacturing integrally with the upper, the midsole and outsole, among other features (¶ 0107 of VanWagnen).
Takashima and VanWagnen teach analogous inventions in the field of footwear with an upper and a sole structure. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have formed the shoe of Takashima via additive 3D manufacturing as a single product, as taught by VanWagnen, in order to form the shoe in a process that can be performed with fewer individual and separate steps, as is a well-known benefit of 3D printing of products.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All art cited on the PTO-892 and not relied upon in an art rejection above is deemed relevant in the field of footwear uppers with an inwardly-bulging portion at the heel collar area and/or uppers with a heel counter.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMESON COLLIER whose telephone number is (571)270-5221. The examiner can normally be reached Monday - Friday 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CLINTON OSTRUP can be reached at (571)272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMESON D COLLIER/Primary Examiner, Art Unit 3732