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 1-5 and 7-14) in the reply filed on February 24, 2026 is acknowledged. Claim 6 is withdrawn from further consideration, and an action on the merits follows regarding claims 1-5 and 7-14.
Claim Objections
Claims 1, 4, 5, 9-11, 13 and 14 are objected to because of the following informalities:
Claims 1, 9, 10 and 11: the language would be clearer if the phrase “configured of” is amended to recite “configured as”
Claim 1, lines 9 and 17
Claim 9, line 3
Claim 10, line 2
Claim 11, line 2
Claim 4, line 2: Examiner suggests clarifying the claim by adding “of the shoe” after “a front end”
Claim 5, line 3: “a rear end side” should recite “the rear end side”, since claim 3 (from which claim 5 depends) already positively recites “a rear end side” of the shoe
Claim 13, line 3: “a foot” should recite “the foot”, since claim 1 (from which claim 13 depends) already positively recites “a foot” of the wearer
Claim 14, line 2: “a sole” should recite “the sole”, since claim 1 (from which claim 14 depends) already positively recites “a sole” of the foot of the wearer
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 2-5 and 7-14 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 that is 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 that is 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 3, Applicant recites the term “belt-like shape” which is indefinite. The phrase “-like” is a type of exemplary claim language that may lead to confusion over the intended scope of the claim. See MPEP 2173.05(d). Correction is required. Examiner suggests just reciting “belt shape”, which would be interpreted as any elongated shape that has a greater length than width, as best as can be understood.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 1 (and claims 2-5 and 7-14 at least due to dependency from claim 1) is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter for the reason(s) below.
Regarding claim 1, Applicant appears to claim parts of the human body, which is not directed to statutory subject matter (i.e. human per se). For example, the claim recites “a bulging portion, which bulges toward the insertion space and includes an easy-deformable portion configured of a three-dimensional mesh structure body, is at a position of the peripheral wall portion corresponding to at least one of a portion behind a medial malleolus point of the foot of the wearer and a portion behind a lateral malleolus point of the foot of the wearer”, which is actively reciting structure in relation to a user/person, rather than reciting that the structure is configured/adapted to be used in such a manner. Correction is required. For purposes of examination, the claim will be interpreted as “a bulging portion, which bulges toward the insertion space and includes an easy-deformable portion configured of a three-dimensional mesh structure body, is at a position of the peripheral wall portion adapted to correspond to at least one of a portion behind a medial malleolus point of the foot of the wearer and a portion behind a lateral malleolus point of the foot of the wearer”.
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, 5, 9, 10 and 12-14, 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 shoe (see Figs. 1-5 which show a shoe (¶ 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 that is 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), a bulging portion, which bulges toward the insertion space (the quarter outer skin and foamed resin cushion part of the upper #2 together define an arbitrary bulging “portion”, which bulges toward the insertion space (see Fig. 1(c) of Takashima, which shows an inwardly-bulging portion at the heel end)) and 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)), is at a position of the peripheral wall portion corresponding to at least one of a portion behind a medial malleolus point of the foot of the wearer and a portion behind a lateral malleolus point of the foot of the wearer (see Fig. 1c, which shows the inwardly bulging portion that is behind where a hypothetical foot’s medial and lateral malleolus points would be), a highly rigid portion, which is a hard-deformable portion having higher rigidity than the easy-deformable portion (as noted above, the counter #1 is part of the peripheral wall portion; the counter is a highly rigid 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), is at a position of the peripheral wall portion lower than a portion of the peripheral wall portion provided with the bulging portion (see Fig. 1c, which shows the dashed-line view of where the counter #1 (i.e. highly rigid portion) is located relative to the inwardly-bulging portion, which is below thereof), and at least a portion of the peripheral wall portion including the bulging portion and the highly rigid portion is configured of a single member (there is at least some arbitrary portion that is part of both the bulging portion and highly rigid portion 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 the single member).
Regarding claim 2, Takashima discloses that the highly rigid portion is located on an outer surface of the peripheral wall portion (see Fig. 1).
Regarding claim 3, Takashima discloses that the highly rigid portion has a belt-like shape (see the boomerang-shaped part of counter #1, which is a “belt-like” shape, inasmuch as has been defined in the claim, that the counter has) extending in a front-rear direction in a portion on a rear end side of the shoe (it has a front-rear direction extension in an arbitrary portion on a rear end side of the shoe, as shown in Fig. 1).
Regarding claim 5, Takashima discloses that the highly rigid portion is inclined downward extending toward a front side of the shoe in a portion on a rear end side of the shoe (see Fig. 1; there is a downward inclination from the rearmost point of counter #1 that is in a direction toward the front side of the shoe, wherein the downward inclination is in an arbitrary portion on the rear end side of the shoe).
Regarding claim 9, Takashima discloses that a portion of the peripheral wall portion corresponding to a rear end portion of the shoe, excluding the highly rigid portion, is entirely configured of a three-dimensional mesh structure body (the portion of the peripheral wall that is, for example, the outer quarter skin fabric, is entirely a three dimensional mesh structure body, which excludes the counter #1 (i.e. highly rigid portion)).
Regarding claim 10, Takashima discloses that the highly rigid 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 12, 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 13, Takashima discloses that the shoe 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 a 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 14, Takashima discloses that the shoe 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 4, as best as can be understood, is rejected under 35 U.S.C. 103 as being unpatentable over Takashima as applied to claims 1 and 3 above, and further in view of Meschter et al. (hereinafter “Meschter”) (US 2010/0037483).
Regarding claim 4, Takashima discloses all the limitations of claims 1 and 3, as set forth above, and teaches that the highly rigid portion reaches a rear end of the shoe (see rear extent of counter #1 in Fig. 1), but does not teach that the highly rigid portion reaches a front end of the shoe.
Meschter teaches a shoe upper with a stretch-resistance part in the form of a tensile element #40, which includes various strands #41, a base layer #42 and a cover layer #43, the strands being positioned between the base layer and the cover layer (¶ 0033 of Meschter). The tensile element #40 reaches both a rear end of the shoe and a front end of the shoe (see Fig. 1 of Meschter).
Takashima and Meschter teach analogous inventions in the field of shoe uppers with rigid support features. 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 elongated the counter #1 of Takashima to extend to reach a front end of the shoe, as such an extent is taught by Meschter, in order to provide added longitudinal support to the shoe upper in the form of adding rigidity thereto through stretch-resistance.
Claim 7, as best as can be understood, is rejected under 35 U.S.C. 103 as being unpatentable over Takashima as applied to claims 1 and 3 above, and further in view of Siegismund (US 2023/0058209).
Regarding claim 7, Takashima discloses all the limitations of claims 1 and 3, as set forth above, but is silent to the peripheral wall portion including a rib portion that extends in an extending direction of the highly rigid portion in a portion where the highly rigid portion is provided and protrudes toward a side opposite to a side of the insertion space, and the highly rigid portion is on an outer surface of a portion corresponding to the rib portion of the peripheral wall portion.
Siegismund teaches a shoe with an upper that includes a TPU skin #144 (including first/second/third/fourth portions #144A/B/C/D on the lateral and medial sides of the upper; ¶ 0055-0056 of Siegismund) that is applied to the outer surface of the upper to provide the upper with different properties, such as regions that experience high stress or rubbing from other components, like the lace eyelets (¶ 0054 of Siegismund).
Takashima and Siegismund teach analogous inventions in the field of shoe uppers with rigidifying features. 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 incorporated the TPU skin #144 and its portions #144A-D of Siegismund into the upper of Takashima in order to provide additional support in the lacing area to improve resistance to wear and rubbing by the laces in the eyelets. As a result of the modification, the peripheral wall portion would include a rib portion (via at least first TPU skin portion #144A; see Fig. 1 of Siegismund for the placement in comparison to modified Takashima) that extends in an extending direction of the highly rigid portion in a portion where the highly rigid portion is provided (first TPU skin portion #144A would extend in a same direction as part of the counter #1, generally forward of the inflection point along the top edge of counter #1) and protrudes toward a side opposite to a side of the insertion space (the TPU skin is applied to the outer surface of the upper, so it would protrude away from the insertion space at least a distance of the thickness of the TPU skin), and the highly rigid portion is on an outer surface of a portion corresponding to the rib portion of the peripheral wall portion (given the breadth of the term “portion” and no clear boundaries being defined in the claim, the counter #1 (i.e. highly rigid portion) would be on an outer surface of an arbitrary portion that corresponds to the TPU skin, inasmuch as the claim has structurally defined with any specificity).
Claim 11, 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 11, 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.
Allowable Subject Matter
Claim 8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action (i.e. claim 8 depends indirectly from claims 1 and 3, which currently have 35 U.S.C. 112(b) rejections applied against them) and to include all of the limitations of the base claim and any intervening claims.
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 that have regions/elements that increase rigidity locally in the upper.
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
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