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 .
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 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.
DETAILED ACTION
The present application, filed on August 6, 2025, in which claims 1-7
were presented for examination, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Species III (Figs. 8-12, claims 1-7) in the reply filed on May 8, 2026 is acknowledged.
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.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1-3 and 5-7 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Regarding claim 1, the limitations “a first boundary portion positioned at a portion of the sole corresponding to a lateral side of a forefoot of a wearer's foot (lines: 6-7)”, and “an expansion portion positioned at a portion of the sole corresponding to the lateral side of the forefoot of the wearer's foot (lines: 8-9)” are positively claiming a human organism, such as the forefoot of the wearers foot. Examiner suggests changing the limitation to incorporate functional language, such as “configured to”, “capable of”, etc.
Regarding claim 2, the limitation “the expansion portion is positioned at least on a lateral side of a portion of the midsole corresponding to a ball of the little toe of the wearer's foot (lines: 1-2)” is positively claiming a human organism, such as the ball of the little toe of the wearer's foot. Examiner suggests changing the limitation to incorporate functional language, such as “configured to”, “capable of”, etc.
Regarding claim 3, the limitation “a dimension of the ball of the little toe of the wearer's foot (line: 3)” is positively claiming a human organism, such as the ball of the little toe of the wearer's foot. Examiner suggests changing the limitation to incorporate functional language, such as “configured to”, “capable of”, etc.
Regarding claims 5 and 6, the limitation “a height of the roll-up portion in an upper-lower direction at a position corresponding to part of the midsole corresponding to a lateral side of a metatarsophalangeal joint of the wearer's foot (lines: 2-4)” is positively claiming a human organism, such as the metatarsophalangeal joint of the wearer's foot. Examiner suggests changing the limitation to incorporate functional language, such as “configured to”, “capable of”, etc.
Regarding claim 7, the limitation “wherein a thickness of at least part of a region of the midsole corresponding to a wearer's toe is greater than a thickness of a region of the midsole corresponding to a wearer's metatarsophalangeal joint (lines: 1-4)” is positively claiming a human organism, such as the wearer's toe and wearer's metatarsophalangeal joint. Examiner suggests changing the limitation to incorporate functional language, such as “configured to”, “capable of”, etc.
Claim 4 is rejected for depending directly/indirectly from a rejected claim.
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.
Claims 1-6 is rejected under 35 U.S.C. 103 as being unpatentable over Truelsen et al. “Truelsen” (US PG Pub. 2021/0186144) in view of Nichols (US Patent 5,042,174).
Regarding claim 1, Truelsen discloses a sole for a shoe including an upper (invention as shown in Fig. 1 and 2), the sole comprising: a midsole (28); and an outsole (30) stacked on a lower side of the midsole (28, as shown in Fig. 1 where the outsole, 30, is underneath the midsole, 28),
with the upper (4) attached to the midsole (28, as shown in Fig. 1), the midsole being provided with a boundary portion (see annotated Fig. 2 below) located between the upper and the midsole in a foot width direction (see annotated Fig. 2 below),
the boundary portion including a first boundary portion positioned at a portion of the sole corresponding to a lateral side of a forefoot of a wearer's foot (as shown in annotated Fig. 2 below),
the midsole (28) having an expansion portion (combination of 70’ and 26) positioned at a portion of the sole corresponding to the lateral side of the forefoot of the wearer's foot (as shown in annotated Fig. 2 below),
the expansion portion (combination of 70’ and 26) bulging from the first boundary portion toward the lateral side of the sole with respect to the first boundary portion in the foot width direction (examiner notes as shown in annotated Fig. 2 below, and notes element 70 is shown in Fig. 2 bulging from the side of the footwear),
the outsole (30) having a roll-up portion (combination of 40 and 76’) protruding upward from a peripheral edge portion of an upper surface of the outsole (as shown in annotated Fig. 2 below),
the roll-up portion (combination of 40 and 76’) being located at a portion corresponding to the expansion portion of the midsole (as shown in Fig. 1 and 2), the roll-up portion covering a peripheral edge portion of the expansion portion from an outside (examiner notes as shown in Fig. 2, where element 76’ is shown covering element 70, which is part of the expansion portion).
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Fig. 2-Examiner Annotated
Truelsen does not disclose the outsole is made of a material having a higher rigidity than that of the midsole.
However, Nichols teaches yet another sole, wherein Nichols teaches an outsole is made of a material having a higher rigidity than that of the midsole (Col. 1, line: 68-Col. 2, line: 6, and Col. 2, lines: 21-30, examiner notes the outsole is more rigid than the midsole, due to the midsole being softer than the outsole).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the outsole and midsole as disclosed by Truelsen, by the outsole being made of a material having a higher rigidity than that of the midsole as taught by Nichols, in order to enhance user comfort and durability of the shoe, while in-use.
Regarding claim 2, Truelsen in view of Nichols disclose wherein the expansion portion (combination of 70’ and 26 of Truelsen) is positioned at least on a lateral side of a portion of the midsole corresponding to a ball of the little toe of the wearer's foot (examiner notes one of ordinary skill in the art would recognize element 26, which is part of the expansion portion, corresponds to a ball of the little toe of wearer’s foot due to where the wearers toe would be placed, when in the footwear, and depending on the size of the wearer’s ball of the little toe).
Regarding claim 3, Truelsen in view of Nichols disclose the invention substantially as claimed above.
They do not explicitly disclose wherein a maximum dimension of the expansion portion in the foot width direction is a length equal to or greater than a dimension of the ball of the little toe of the wearer's foot in the foot width direction.
It would have been obvious to one having ordinary skill in the art at the time the
invention was made to have a maximum dimension of the expansion portion in the foot width direction is a length equal to or greater than a dimension of the ball of the little toe of the wearer's foot in the foot width direction, since the claimed value is merely an optimum or workable range, in order to achieve an optimal configuration. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable range involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 4, Truelsen in view of Nichols disclose wherein a dimension of the expansion portion in the foot width direction (as shown in annotated Fig. 2 above).
They do not explicitly disclose wherein a dimension of the expansion portion in the foot width direction is a length of 10 mm or more.
It would have been obvious to one having ordinary skill in the art at the time the
invention was made to have a dimension of the expansion portion in the foot width direction is a length of 10 mm or more, since the claimed value is merely an optimum or workable range, in order to achieve an optimal configuration. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable range involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 5, Truelsen in view of Nichols disclose wherein a height of the roll-up portion in an upper-lower direction at a position corresponding to part of the midsole corresponding to a lateral side of a metatarsophalangeal joint of the wearer's foot is equal to or greater than half a distance between a lower surface of the outsole and an upper surface of the midsole (examiner notes as shown in annotated Fig. 2 above of Truelsen, where the height of the roll up portion, combination of 40 and 76’, is greater).
Regarding claim 6, Truelsen in view of Nichols disclose wherein a height of the roll-up portion in an upper-lower direction at a position corresponding to part of the midsole corresponding to a lateral side of a metatarsophalangeal joint of the wearer's foot (as shown in annotated Fig. 2 above).
They do not explicitly disclose wherein a height of the roll-up portion in an upper-lower direction at a position corresponding to part of the midsole corresponding to a lateral side of a metatarsophalangeal joint of the wearer's foot is 12 mm or more.
It would have been obvious to one having ordinary skill in the art at the time the
invention was made to have a height of the roll-up portion in an upper-lower direction at a position corresponding to part of the midsole corresponding to a lateral side of a metatarsophalangeal joint of the wearer's foot is 12 mm or more., since the claimed value is merely an optimum or workable range, in order to achieve an optimal configuration. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable range involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Truelsen in view of Nichols, further in view of Geer et al. “Geer” (US Patent 6,519,876), hereinafter Geer.
Regarding claim 7, Truelsen in view of Nichols disclose the invention substantially as claimed above.
They do not explicitly disclose wherein a thickness of at least part of a region of the midsole corresponding to a wearer's toe is greater than a thickness of a region of the midsole corresponding to a wearer's metatarsophalangeal joint.
However, Geer teaches yet another sole for footwear, wherein Geer teaches a midsole (600) having a thickness of at least part of a region of the midsole corresponding to a wearer's toe is greater than a thickness of a region of the midsole corresponding to a wearer's metatarsophalangeal joint (see annotated Fig. 6 below).
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Fig. 6-Examiner Annotated
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the midsole as disclosed by Truelsen in view of Nichols, by having a thickness of at least part of a region of the midsole corresponding to a wearer's toe is greater than a thickness of a region of the midsole corresponding to a wearer's metatarsophalangeal joint as taught by Geer, in order to enhance user comfort
Conclusion
The prior art made of record and not relied upon is considered pertinent (See PTO-892) to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAKOTA MARIN whose telephone number is (571)272-3529. The examiner can normally be reached on Mon.-Fri., 9:00AM-6:00PM.
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, ALISSA TOMPKINS can be reached on (571) 272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAKOTA MARIN/ Examiner, Art Unit 3732
/ALISSA J TOMPKINS/ Supervisory Patent Examiner, Art Unit 3732
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