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 filed on 5/12/2026 has been received; Claims 1, 3-14, 16-20 are pending.
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 1, 3-14, 16-20 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.
Claims 1 & 14 recite “a hardness” in a “a range”. What scale is being used to determine hardness? Also, such limitation renders the claim indefinite since it's not clear what structural limitation applicant intends to cover since it is nowhere stated what is meant by "hardness range".
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-10 & 12-14, 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 2012/0159814) in view of Deem (US 2006/0117599) in further view of Gross (USPN 5,077,915).
Regarding Claims 1 & 14, Smith disclose an upper (23) and a sole connected to the upper (Figure 1), the sole comprising: a first layer (22), a second layer (12), a third layer (50), and a fourth layer (14); wherein the first layer, the second layer, the third layer, and the fourth layer are stacked from bottom to top (Figure 1), the hardness of the third layer is greater than a hardness of the second layer (Para. 45 & 53). Smith is silent to a hardness of the first layer is greater than a hardness of the third layer and the hardness of the second layer is greater than a hardness of the fourth layer. However, Deem disclose a sole (Figure 1) comprising: a first layer (20), a second layer (14), a third layer (22/17), and a fourth layer (18); wherein the first layer, the second layer, the third layer, and the fourth layer are stacked from bottom to top (Figure 1), wherein a hardness of the first layer is greater than a hardness of the third layer (Para. 48, 51 & 54) and the hardness of the second layer is greater than a hardness of the fourth layer (Para. 44 & 53). It would have been obvious to one of ordinary skill in the art to include various hardness layers, as taught by Deem, for the sole layers of Smith, in order to provide desired performance characteristics and shock absorbency. Furthermore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to experiment with different ranges of hardness for the layers in order to achieve an optimal configuration for the purpose of performance, comfort, support and shock absorbency, since discovering the optimum or workable ranges of the hardness involves only routine skill in the art. The combination of Smith and Deem do not specifically disclose the hardness of the first layer is in a range of 51+3 degrees, the hardness of the second layer is in a range of 45+3 degrees, the hardness of the third layer is in a range of 49+3 degrees, and the hardness of the fourth layer is in a range of 35+3 degrees. Gross discloses layers having first layer is in a range of 55+3 degrees, the hardness of the second layer is in a range of 45+3 degrees, the hardness of the third layer is in a range of 65+3 degrees, and the hardness of the fourth layer is in a range of soft. It would have been obvious to one having ordinary skill in the art at the time the invention was made to experiment with different ranges of hardness for the layers, as taught by Gross, in order to achieve an optimal configuration for the purpose of performance, comfort, support and shock absorbency, since discovering the optimum or workable ranges of the hardness involves only routine skill in the art.
Regarding Claim 3, the combination of Smith, Deem and Gross do not specifically disclose a difference in hardness between the first layer and the second layer is 10 degrees, and a difference in hardness between the third layer and the fourth layer is 15 degrees. It, however, would have been obvious to one having ordinary skill in the art at the time the invention was made to experiment with different ranges of hardness for the layers in order to achieve an optimal configuration for the purpose of performance, comfort, support and shock absorbency, since discovering the optimum or workable ranges of the hardness involves only routine skill in the art.
Regarding Claims 4 & 17, the combination of Smith, Deem and Gross do not specifically disclose a rebound rate of the second layer is greater than a rebound rate of the fourth layer, the rebound rate of the fourth layer is greater than a rebound rate of the first layer, and the rebound rate of the first layer is greater than a rebound rate of the third layer. It, however, would have been obvious to one having ordinary skill in the art at the time the invention was made to experiment with different ranges of rebound rate for the layers in order to achieve an optimal configuration for the purpose of performance, comfort, support and shock absorbency, since discovering the optimum or workable ranges of the rebound rate involves only routine skill in the art. In re Aller, 105 USPQ 233
Regarding Claims 5 & 18, the combination of Smith, Deem and Gross do not specifically disclose the rebound rate of the first layer is in a range of 55 %+2%, the rebound rate of the second layer is in a range of 65 %+2%, the rebound rate of the third layer is in a range of 50 %+2%, and the rebound rate of the fourth layer is in a range of 60 %+2%. It, however, would have been obvious to one having ordinary skill in the art at the time the invention was made to experiment with different ranges of rebound rate for the layers in order to achieve an optimal configuration for the purpose of performance, comfort, support and shock absorbency, since discovering the optimum or workable ranges of the rebound rate involves only routine skill in the art.
Regarding Claim 6, the combination of Smith, Deem and Gross do not specifically disclose a difference in rebound rate between any two adjacent layers among the first layer, the second layer, the third layer, and the fourth layer is 10%to150%. It, however, would have been obvious to one having ordinary skill in the art at the time the invention was made to experiment with different ranges of rebound rate for the layers in order to achieve an optimal configuration for the purpose of performance, comfort, support and shock absorbency, since discovering the optimum or workable ranges of the rebound rate involves only routine skill in the art.
Regarding Claims 7 & 19, the combination of Smith, Deem and Gross disclose a density of the first layer is greater than a density of the third layer (Smith, Para. 53 & Deem, Para. 48, 51 & 53), the density of the third layer is greater than a density of the second layer (Smith, Para. 45 & 53), and the density of the second layer is greater than or equal to a density of the fourth layer (Deem, Para. 44 & 53).
Regarding Claims 8 & 20, the combination of Smith, Deem and Gross do not specifically disclose the density of the first layer is in a range of 200 G/L to 260 G/L, the density of the second layer is in a range of 120 G/L to 160 G/L, the density of the third layer is in a range of 190 G/L to 250 G/L, and the density of the fourth layer is in a range of 120 G/L to 150 G/L. It, however, would have been obvious to one having ordinary skill in the art at the time the invention was made to experiment with different ranges of density for the layers in order to achieve an optimal configuration for the purpose of performance, comfort, support and shock absorbency, since discovering the optimum or workable ranges of the density involves only routine skill in the art.
Regarding Claim 9, the combination of Smith, Deem and Gross do not specifically disclose a difference in the density between any two adjacent layers among the first layer, the second layer, the third layer, and the fourth layer is greater than or equal to 50 G/L. It, however, would have been obvious to one having ordinary skill in the art at the time the invention was made to experiment with different ranges of density for the layers in order to achieve an optimal configuration for the purpose of performance, comfort, support and shock absorbency, since discovering the optimum or workable ranges of the density involves only routine skill in the art.
Regarding Claim 10, the combination of Smith, Deem and Gross do not specifically disclose each of the first layer, the second layer, the third layer, and the fourth layer is a popcorn layer containing foamed thermoplastic polyurethane elastomer. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the material of the layers as claimed, since it is well within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. Also, such a modification would be considered a mere choice of preferred material that is on the basis of its suitability for the intended use. In other words, using a popcorn layer containing foamed thermoplastic polyurethane elastomer would have been an "obvious to try" approach because the use of such a material that is not of innovation but of ordinary skill and common sense.
Regarding Claim 12, the combination of Smith, Deem and Gross disclose the first layer at least support a rearfoot area and an arch area of the second layer (Smith, Figure 1).
Regarding Claim 13, the combination of Smith, Deem and Gross disclose an outsole (Smith, 24), wherein the outsole is located on a side of the first layer facing away from the second layer and in an area of a side of the second layer facing away from the third layer, the area of the side of the second layer is not supported by the first layer (Figure 1).
Claims 11 are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 2012/0159814) in view of Deem (US 2006/0117599), Gross (USPN 5,077,915) in further view of Wynne (US 2023/0080581).
Regarding Claim 11, the combination of Smith, Deem and Gross do not specifically disclose the third layer is a 4D printed layer. However, Wynne discloses the use of 4D printing for shoes (Para. 4). It would have been obvious to one of ordinary skill in the art to use 4D printing for a layer of material, as taught by Wynne, to the sole of Smith-Deem, in order to provide activation stimulus materials or “smart” materials to the sole.
Response to Arguments
Applicant’s arguments with respect to the amended claims have been fully considered but are moot in view of the new grounds of rejection as discussed supra.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/KATHARINE G KANE/Primary Examiner, Art Unit 3732
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