DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
This is in response to Application filed on January 13, 2026 in which claims 21-40 are presented for examination.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21, 28 and 37 and dependent claims are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 19, 20 and dependent claims of U.S. Patent No. 12,414,603. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 21, 28 and 37 and dependent claims are anticipated by the conflicting patented claims 1, 19, 20 and dependent claims as shown in the table below. The difference between the instant examined claim and the conflicting patented claim is that the conflicting patented claim is narrower in scope and falls within the scope of the examined claim. Thus, the species or sub-genus claimed in the conflicting patent anticipates the examined claimed genus. Therefore, a patent to the examined claim genus would improperly extend the right to exclude granted by a patent to the species or sub-genus should the genus issue as a patent after the species or sub-genus. See MPEP §804(II)(B)(1).
Present Application
Patent No. 12,414,603
21. (New) An article of footwear comprising:
an upper;
a sole structure, wherein the sole structure includes:
a midsole, wherein the midsole includes
an enclosed cavity and at least one window;
a thermoformed cushioning element disposed within the enclosed cavity,
wherein the cushioning element includes a first barrier film and a second barrier film coupled to one another at a peripheral seam enclosing an internal volume,
the peripheral seam formed at a side of the thermoformed cushioning element, wherein the peripheral seam is not visible through the at least one window.
1. An article of footwear comprising:
an upper;
a sole structure, wherein the sole structure includes:
a midsole, wherein the midsole includes an enclosed cavity and at least one window extending between top and bottom planes that are offset from one another by a gap;
a thermoformed cushioning element disposed within the enclosed cavity,
wherein the cushioning element includes a first barrier film and a second barrier film coupled to one another at a peripheral seam enclosing an internal volume,
the peripheral seam formed at a side of the thermoformed cushioning element which is proximate the at least one window,
wherein the peripheral seam is disposed outside of the gap such that the peripheral seam is not visible through the at least one window; and
an outsole layer, wherein the outsole layer forms a ground-engaging surface of the article of footwear.
22. wherein the midsole includes a first window extending along a medial side of an exterior of the sole structure, and a second window extending along a lateral side of an exterior of the sole structure.
2. wherein the midsole includes a first window extending along a medial side of an exterior of the sole structure, and a second window extending along a lateral side of an exterior of the sole structure.
26. wherein the midsole includes a first foam and a second foam, wherein the first foam contacts a top surface of the cushioning element and the second foam contacts a bottom surface of the cushioning element.
4. wherein the first foam contacts an outer surface of the cushioning element, and the second foam contacts a different part of the outer surface of the cushioning element than the first foam.
21. (New) An article of footwear comprising:
an upper;
a sole structure, wherein the sole structure includes:
a midsole, wherein the midsole includes
an enclosed cavity and at least one window;
a thermoformed cushioning element disposed within the enclosed cavity,
wherein the cushioning element includes a first barrier film and a second barrier film coupled to one another at a peripheral seam enclosing an internal volume,
the peripheral seam formed at a side of the thermoformed cushioning element, wherein the peripheral seam is not visible through the at least one window.
22. wherein the midsole includes a first window extending along a medial side of an exterior of the sole structure, and a second window extending along a lateral side of an exterior of the sole structure.
19. An article of footwear comprising: an upper;
a sole structure, wherein the sole structure includes:
a midsole, wherein the midsole includes an enclosed cavity; a
cushioning element disposed within the enclosed cavity,
wherein the cushioning element includes an first barrier film and a second barrier film enclosing an internal volume,
wherein the first barrier film and the second barrier film are coupled to one another at a peripheral seam that extends along a side surface of the cushioning element;
a first window extending along a medial side of the sole structure;
a second window extending along a lateral side of the sole structure,
wherein the peripheral seam is positioned below bottom surfaces of the first window and the second window,
wherein the side surface of the cushioning element is proximate the first window; and
an outsole layer, wherein the outsole layer forms a ground-engaging surface of the article of footwear.
28. (New) An article of footwear comprising:
an upper;
a sole structure, wherein the sole structure includes:
a midsole having an enclosed cavity and at least one window;
a thermoformed cushioning element disposed within the enclosed cavity,
wherein the cushioning element includes:
a first barrier film and a second barrier film coupled to one another at a peripheral seam;
a medial body;
a lateral body; and
one or more central bodies disposed between the medial body and the lateral body,
wherein no portion of the peripheral seam is visible from an exterior of the article of footwear through the at least one window, and wherein a hollow interior of each of the one or more central bodies is visible from the exterior of the article of footwear through the at least one window.
1. An article of footwear comprising:
an upper;
a sole structure, wherein the sole structure includes:
a midsole, wherein the midsole includes an enclosed cavity and at least one window extending between top and bottom planes that are offset from one another by a gap;
a thermoformed cushioning element disposed within the enclosed cavity,
wherein the cushioning element includes a first barrier film and a second barrier film coupled to one another at a peripheral seam enclosing an internal volume,
the peripheral seam formed at a side of the thermoformed cushioning element which is proximate the at least one window,
wherein the peripheral seam is disposed outside of the gap such that the peripheral seam is not visible through the at least one window; and
an outsole layer, wherein the outsole layer forms a ground-engaging surface of the article of footwear.
29. wherein the medial body and the lateral body are each substantially J-shaped.
14. wherein the medial body and the lateral body are substantially J-shaped.
31. further comprising a web area disposed between the medial body, the lateral body, and the one or more central bodies.
5. wherein the cushioning element includes: a medial body extending from a first anterior medial end to a second posterior medial end, and disposed adjacent to the first window; a lateral body extending from a first anterior lateral end to a second posterior lateral end, and disposed adjacent to the second window; one or more central bodies disposed between the medial body and the lateral body extending in a medial direction and a lateral direction; and a web area disposed between the medial body, the lateral body, and the one or more central bodies.
32. wherein the web area is positioned in a plane offset from a plane containing substantially all of the peripheral seam.
10. wherein the first barrier film and the second barrier film are also coupled to one another at the web area disposed between the medial body, the lateral body, and the one or more central bodies, wherein the web area is positioned in a plane offset from a plane containing substantially all of the peripheral seam.
34. wherein the medial body, the lateral body, and the one or more central bodies are in fluid communication with one another.
6. wherein the medial body, the lateral body, and the one or more central bodies, are fluid-filled.
35. wherein the one or more central bodies includes exactly four central bodies.
16. wherein the one or more central bodies includes exactly four central bodies.
36. wherein the at least one window includes a first window extending along a medial side of the midsole and a second window extending along a lateral side of the midsole, wherein the medial body is disposed adjacent to the first window and the lateral body is disposed adjacent to the second window.
2. wherein the midsole includes a first window extending along a medial side of an exterior of the sole structure, and a second window extending along a lateral side of an exterior of the sole structure.
28. (New) An article of footwear comprising:
an upper;
a sole structure, wherein the sole structure includes:
a midsole having an enclosed cavity and at least one window;
a thermoformed cushioning element disposed within the enclosed cavity,
wherein the cushioning element includes:
a first barrier film and a second barrier film coupled to one another at a peripheral seam;
a medial body;
a lateral body; and
one or more central bodies disposed between the medial body and the lateral body,
wherein no portion of the peripheral seam is visible from an exterior of the article of footwear through the at least one window, and
wherein a hollow interior of each of the one or more central bodies is visible from the exterior of the article of footwear through the at least one window.
36. wherein the at least one window includes a first window extending along a medial side of the midsole and a second window extending along a lateral side of the midsole, wherein the medial body is disposed adjacent to the first window and the lateral body is disposed adjacent to the second window.
19. An article of footwear comprising: an upper;
a sole structure, wherein the sole structure includes:
a midsole, wherein the midsole includes an enclosed cavity; a
cushioning element disposed within the enclosed cavity,
wherein the cushioning element includes an first barrier film and a second barrier film enclosing an internal volume,
wherein the first barrier film and the second barrier film are coupled to one another at a peripheral seam that extends along a side surface of the cushioning element;
a first window extending along a medial side of the sole structure;
a second window extending along a lateral side of the sole structure,
wherein the peripheral seam is positioned below bottom surfaces of the first window and the second window,
wherein the side surface of the cushioning element is proximate the first window; and
an outsole layer, wherein the outsole layer forms a ground-engaging surface of the article of footwear.
37. (New) A cushioning element for an article of footwear,
the cushioning element comprising: a first barrier film and a second barrier film enclosing an internal volume;
a medial body; a lateral body; one or more central bodies disposed between the medial body and the lateral body; and
a web area disposed between the medial body, the lateral body, and the one or more central bodies,
wherein the first barrier film and the second barrier film are coupled to one another at a peripheral seam that extends along a side surface of the cushioning element, and
wherein the web area is positioned in a plane offset from a plane containing substantially all of the peripheral seam.
20. A cushioning element for an article of footwear,
the cushioning element comprising: a first barrier film and a second barrier film enclosing an internal volume;
a medial body extending from a first anterior medial end to a second posterior medial end;
a lateral body extending from a first anterior lateral end to a second posterior lateral end;
one or more central bodies disposed between the medial body and the lateral body extending in a medial direction and a lateral direction; and
wherein the first barrier film and the second barrier film are coupled to one another at
1) a peripheral seam that extends along a side surface of the cushioning element, the peripheral seam including a first substantially flat section positioned substantially in a first plane, a second substantially flat section positioned in a second plane offset from the first plane, and an angled section positioned between the first substantially flat section and the second substantially flat section and
2) at a web area disposed between the medial body, the lateral body, and the one or more central bodies, wherein the web area is disposed in a second plane that is offset from the first plane.
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 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 21-22, 24, 26-33, 36-38 and 40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tawney et al. (2002/0139471)[Tawney].
Regarding claim 21, Tawney teaches, An article of footwear comprising: an upper; a sole structure, wherein the sole structure includes: a midsole, wherein the midsole includes an enclosed cavity and at least one window; a thermoformed cushioning element disposed within the enclosed cavity (“A bladder 10' is illustrated in FIG. 24 as part of a midsole assembly for a shoe S. The shoe comprises an upper U, a insole I, a midsole assembly M and an outsole O. While the full-foot bladder 10' is shown in the drawing, any of the bladders described herein or alternative constructions thereof can be substituted in the midsole assembly. Bladder 10' can be incorporated into midsole 60 by any conventional technique such as foam encapsulation or placement in a cut-out portion of a foam midsole. A suitable foam encapsulation technique is disclosed in U.S. Pat. No. 4,219,945 to Rudy, hereby incorporated by reference.”, [0130], “Bladder 210 is constructed so that sidewalls 216 are the same size or larger than the windows exposing them, i.e., openings in the side of the midsole. The number and size of the sidewalls 216 can depend on how many windows are in the midsole of the footwear, how much of bladder 210 is intended to be exposed through each bladder window and the size of each window.”, [0138], “The multiple film layer bladders of the present invention may also be constructed with an inverted seam along the sidewall. As shown in FIGS. 32-35, an inverted seam may be formed of the inner barrier sheets. Bladder 210 includes top, outer barrier layer 212 formed of a sheet of barrier material and a bottom, outer barrier layer 214 formed of a sheet of barrier material. Barrier layers or sheets 212 and 214 are referred to as "top barrier sheet" and "bottom barrier sheet," respectively, for ease of explanation. The use of the reference terms "top," "bottom," etc. are not intended to be limiting on the present invention, but rather are for ease of description and refer to the orientation of the bladders as shown in the figures. Layers 212 and 214 can be secured directly to each other along edge 211, as shown at the right side of FIG. 32 and in the prior embodiments, or operatively secured to each other by sidewall(s) 216, as shown in FIG. 33. Edge 211 is positioned within an article of footwear so that it is surrounded by midsole or outsole materials when the footwear is constructed, see FIG. 24.”, [0137], “Regarding the materials for the bladders disclosed herein, the top and bottom barrier sheets, sidewalls elements and inner barrier layers can be formed from the same or different barrier materials, such as thermoplastic elastomer films, using known methods.”, [0153], “While RF welding has been the preferred method of making the multi-stage cushioning bladders of the present invention, the particular type of attachment may vary. For instance, an adhesive bond between film layers may be used, as well as other known fusion, thermal, and ultrasonic bonding methods.”, [0162], therefore, S comprising: U; M/O, wherein M/O includes: M, wherein M includes an enclosed cavity (“cut-out portion”) and at least one window ([0138], shown in figure 24); 210 disposed within the enclosed cavity (“cut-out portion”), figure 24), wherein the cushioning element includes a first barrier film and a second barrier film coupled to one another at a peripheral seam enclosing an internal volume, the peripheral seam formed at a side of the thermoformed cushioning element, wherein the peripheral seam is not visible through the at least one window (“In accordance with one aspect of the present invention, a bladder is formed of multiple layers of barrier film to provide multiple pressurized layers of cushioning fluid or gas when the bladder is filled to provide layers of distinct cushioning properties.”, [0030], “The multiple film layer bladders of the present invention may also be constructed with an inverted seam along the sidewall. As shown in FIGS. 32-35, an inverted seam may be formed of the inner barrier sheets. Bladder 210 includes top, outer barrier layer 212 formed of a sheet of barrier material and a bottom, outer barrier layer 214 formed of a sheet of barrier material. Barrier layers or sheets 212 and 214 are referred to as "top barrier sheet" and "bottom barrier sheet," respectively, for ease of explanation…Layers 212 and 214 can be secured directly to each other along edge 211, as shown at the right side of FIG. 32 and in the prior embodiments, or operatively secured to each other by sidewall(s) 216, as shown in FIG. 33. Edge 211 is positioned within an article of footwear so that it is surrounded by midsole or outsole materials when the footwear is constructed, see FIG. 24.”, [0137], “Bladder 210 is constructed so that sidewalls 216 are the same size or larger than the windows exposing them, i.e., openings in the side of the midsole. The number and size of the sidewalls 216 can depend on how many windows are in the midsole of the footwear, how much of bladder 210 is intended to be exposed through each bladder window and the size of each window.”, [0138], therefore, wherein 210 includes 212 and 214 coupled to one another at 211 enclosing an internal volume (figures 7-10), 211 formed at a side of 210, wherein 211 is not visible through the at least one window (shown in figure 24), figures 7-10 and 24).
Regarding claim 22, Tawney teaches, wherein the midsole includes a first window extending along a medial side of an exterior of the sole structure, and a second window extending along a lateral side of an exterior of the sole structure (“Bladder 210 is constructed so that sidewalls 216 are the same size or larger than the windows exposing them, i.e., openings in the side of the midsole. The number and size of the sidewalls 216 can depend on how many windows are in the midsole of the footwear, how much of bladder 210 is intended to be exposed through each bladder window and the size of each window.”, [0138], therefore, wherein M includes a first window (not shown in figure 24) extending along an annotated medial side of an exterior of M/O, and an annotated second window extending along an annotated lateral side of an exterior of M/O, annotated figure 24).
Regarding claim 24, Tawney teaches, wherein the at least one window is disposed in a heel region of the sole structure (“Bladder 210 is constructed so that sidewalls 216 are the same size or larger than the windows exposing them, i.e., openings in the side of the midsole. The number and size of the sidewalls 216 can depend on how many windows are in the midsole of the footwear, how much of bladder 210 is intended to be exposed through each bladder window and the size of each window. A sidewall can be individually formed for each window or one wall can be formed for extending within and between all of the windows. For example, a bladder in the heel may be exposed by one or more windows on each side of the footwear and include the same number of sidewalls as windows. In the alternative, the midsole can be formed with a single window that wraps around the heel.”, [0138], therefore, wherein the at least one window is disposed in a heel region of M/O).
Regarding claim 26, Tawney teaches, wherein the midsole includes a first foam and a second foam, wherein the first foam contacts a top surface of the cushioning element and the second foam contacts a bottom surface of the cushioning element (“Bladder 10' can be incorporated into midsole 60 by any conventional technique such as foam encapsulation or placement in a cut-out portion of a foam midsole. A suitable foam encapsulation technique is disclosed in U.S. Pat. No. 4,219,945 to Rudy, hereby incorporated by reference.”, [0130], Rudy 4,219,945, “Another manner of enclosing the insert 10 in elastomeric material is to preform the upper and lower portions 19a, 19b of the encapsulating member, to conform to the shape of the insert 10, such as shown in FIG. 9. The two parts of the encapsulating member are then moved toward each other around the insert 10, the two parts being adhered to one another and to the insert itself by a suitable cement or other bonding process.”, Col. 4 ln. 51-58, figure 9, “As disclosed in FIG. 5, the insert 10 and the foam encapsulation member 19 surrounding it are used as the midsole 40 of a shoe”, Col. 5 ln. 34-36, therefore, wherein M includes a first foam (19a, Rudy, figure 9) and a second foam (19b, Rudy, figure 9), wherein the first foam (19a, Rudy, figure 9) contacts a top surface of 210 and the second foam (19b, Rudy, figure 9) contacts a bottom surface of 210, figures 7-10 and 24 and Rudy figure 9).
Regarding claim 27, Tawney teaches, wherein the cushioning element is a fluid-filled bladder pressurized to a pressure between 10 PSI and 25 PSI (The two fluid layers may be of equal pressure or differing pressures depending on the particular cushioning profile desired. For example, if a lower pressure fluid layer is placed closest to a wearer's foot, the shoe sole would impart a softer or springier feel to the wearer. Depending upon the activity for which the shoe is designed, the pressure of the fluid layers may be adjusted and fine tuned to obtain the most desired response and feel. Inflation of the bladder is achieved through a valve stem that is open to all fluid layers. As the fluid layers reach their desired pressure, the film layers defining that fluid layer can be sealed at the valve stem to cease inflation of that fluid layer while other layers continue to be pressurized. Sequential sealing of the appropriate film layers in the valve area will enable customized pressurization of the various fluid filled layers of the bladder. This principle can be applied to any number of film layers.”, [0102], “As best seen in FIGS. 14 and 15, elongated connection sites 70 divide the middle fluid layer into a plurality of discrete sub-chambers A, B, C, D, E, F, and G. Each of these sub-chambers is inflated through a separate inlet port "a" through "g," respectively, so that each sub-chamber can be inflated to a different pressure. The inlet ports are illustrated in their post-inflation state, sealed by a circular weld. Some of the elongated connection sites define narrow inflation channels 75 which provide communication from an inlet port to one of the sub-chambers. In this manner, the cushioning and support provided by the middle fluid layer can be fine tuned along the plane of the foot. For example…Chamber "E can be inflated to 20 psi for heel cushioning. Lateral chamber "D" can be inflated to 10 psi for lateral arch support. Forefoot chamber "A" can be inflated to 25 psi and lateral forefoot chamber "B" can be inflated to 15 psi, so that both of these chambers provide forefoot cushioning.”, [0119], therefore, wherein 210 is a fluid-filled bladder pressurized to a pressure between 10 PSI and 25 PSI, figures -10 and 14-15).
Regarding claim 28, Tawney teaches, An article of footwear comprising: an upper; a sole structure, wherein the sole structure includes: a midsole having an enclosed cavity and at least one window; a thermoformed cushioning element disposed within the enclosed cavity (“A bladder 10' is illustrated in FIG. 24 as part of a midsole assembly for a shoe S. The shoe comprises an upper U, a insole I, a midsole assembly M and an outsole O. While the full-foot bladder 10' is shown in the drawing, any of the bladders described herein or alternative constructions thereof can be substituted in the midsole assembly. Bladder 10' can be incorporated into midsole 60 by any conventional technique such as foam encapsulation or placement in a cut-out portion of a foam midsole. A suitable foam encapsulation technique is disclosed in U.S. Pat. No. 4,219,945 to Rudy, hereby incorporated by reference.”, [0130], “Bladder 210 is constructed so that sidewalls 216 are the same size or larger than the windows exposing them, i.e., openings in the side of the midsole. The number and size of the sidewalls 216 can depend on how many windows are in the midsole of the footwear, how much of bladder 210 is intended to be exposed through each bladder window and the size of each window.”, [0138], “The multiple film layer bladders of the present invention may also be constructed with an inverted seam along the sidewall. As shown in FIGS. 32-35, an inverted seam may be formed of the inner barrier sheets. Bladder 210 includes top, outer barrier layer 212 formed of a sheet of barrier material and a bottom, outer barrier layer 214 formed of a sheet of barrier material. Barrier layers or sheets 212 and 214 are referred to as "top barrier sheet" and "bottom barrier sheet," respectively, for ease of explanation. The use of the reference terms "top," "bottom," etc. are not intended to be limiting on the present invention, but rather are for ease of description and refer to the orientation of the bladders as shown in the figures. Layers 212 and 214 can be secured directly to each other along edge 211, as shown at the right side of FIG. 32 and in the prior embodiments, or operatively secured to each other by sidewall(s) 216, as shown in FIG. 33. Edge 211 is positioned within an article of footwear so that it is surrounded by midsole or outsole materials when the footwear is constructed, see FIG. 24.”, [0137], “Regarding the materials for the bladders disclosed herein, the top and bottom barrier sheets, sidewalls elements and inner barrier layers can be formed from the same or different barrier materials, such as thermoplastic elastomer films, using known methods.”, [0153], “While RF welding has been the preferred method of making the multi-stage cushioning bladders of the present invention, the particular type of attachment may vary. For instance, an adhesive bond between film layers may be used, as well as other known fusion, thermal, and ultrasonic bonding methods.”, [0162], therefore, S comprising: U; M/O, wherein M/O includes: M, wherein M includes an enclosed cavity (“cut-out portion”) and at least one window ([0138], shown in figure 24); 210 disposed within the enclosed cavity (“cut-out portion”), figure 24), wherein the cushioning element includes a first barrier film and a second barrier film coupled to one another at a peripheral seam; a medial body; a lateral body; and one or more central bodies disposed between the medial body and the lateral body, wherein no portion of the peripheral seam is visible from an exterior of the article of footwear through the at least one window, and wherein a hollow interior of each of the one or more central bodies is visible from the exterior of the article of footwear through the at least one window (“In accordance with one aspect of the present invention, a bladder is formed of multiple layers of barrier film to provide multiple pressurized layers of cushioning fluid or gas when the bladder is filled to provide layers of distinct cushioning properties.”, [0030], “(“Bladder 210 is constructed so that sidewalls 216 are the same size or larger than the windows exposing them, i.e., openings in the side of the midsole. The number and size of the sidewalls 216 can depend on how many windows are in the midsole of the footwear, how much of bladder 210 is intended to be exposed through each bladder window and the size of each window. A sidewall can be individually formed for each window or one wall can be formed for extending within and between all of the windows. For example, a bladder in the heel may be exposed by one or more windows on each side of the footwear and include the same number of sidewalls as windows.”, [0136], “The multiple film layer bladders of the present invention may also be constructed with an inverted seam along the sidewall. As shown in FIGS. 32-35, an inverted seam may be formed of the inner barrier sheets. Bladder 210 includes top, outer barrier layer 212 formed of a sheet of barrier material and a bottom, outer barrier layer 214 formed of a sheet of barrier material. Barrier layers or sheets 212 and 214 are referred to as "top barrier sheet" and "bottom barrier sheet," respectively, for ease of explanation…Layers 212 and 214 can be secured directly to each other along edge 211, as shown at the right side of FIG. 32 and in the prior embodiments, or operatively secured to each other by sidewall(s) 216, as shown in FIG. 33. Edge 211 is positioned within an article of footwear so that it is surrounded by midsole or outsole materials when the footwear is constructed, see FIG. 24.”, [0137], “Bladder 210 is constructed so that sidewalls 216 are the same size or larger than the windows exposing them, i.e., openings in the side of the midsole. The number and size of the sidewalls 216 can depend on how many windows are in the midsole of the footwear, how much of bladder 210 is intended to be exposed through each bladder window and the size of each window.”, [0138], therefore, wherein 210 includes 212 and 214 coupled to one another at 211; an annotated medial body; an annotated lateral body; and one or more annotated central bodies disposed between the annotated medial body and the annotated lateral body, wherein no portion of 211 is visible from an exterior of the article of footwear through the at least one window (shown in figure 24), and wherein a hollow interior of each of the one or more annotated central bodies is visible from the exterior of the article of footwear through the at least one window(shown in figure 24), figures 7-10 and 24, annotated figure 33).
Regarding claim 29, Tawney teaches, wherein the medial body and the lateral body are each substantially J-shaped (wherein the annotated medial body and the annotated lateral body are each substantially J-shaped, annotated figure 33).
Regarding claim 30, Tawney teaches, wherein the one or more central bodies extend perpendicular to each of the medial body and the lateral body (wherein the one or more annotated central bodies extend perpendicular to each of the annotated medial body and the annotated lateral body, annotated figure 33).
Regarding claim 31, Tawney teaches, further comprising a web area disposed between the medial body, the lateral body, and the one or more central bodies (“Bladder 210 includes tensile member 232 formed of two inner barrier layers 252, 253 formed of sheets of barrier material. Layers 252 and 253 are sealed together and extend between the inner surfaces 262 of top and bottom barrier layers 212 and 214 for maintaining the shape and contour of bladder 210. Inner layers 252,253 are secured to outer layers 212 and 214 using conventional techniques such as RF welding. The resulting welds 233 formed between any of the layers at the points of attachment are indicated schematically in FIG. 35 by "X." Barrier layers 252 and 253 are secured together to establish an inner bladder chamber 255 providing multi-stage or multi-layer cushioning within bladder 210. Chamber 255 can include a plurality of internal channels.”, [0140], therefore, further comprising 233 disposed between the annotated medial body, the annotated lateral body, and the one or more annotated central bodies, annotated figures 24, 33 and 34, see also [0139]).
Regarding claim 32, Tawney teaches, wherein the web area is positioned in a plane offset from a plane containing substantially all of the peripheral seam (wherein 233 is positioned in a plane offset from a plane containing substantially all of the peripheral seam, [0140], figures 34 and 35).
Regarding claim 33, Tawney teaches, wherein the web area includes one or more holes disposed therein (“Inner layers 252, 253 are secured to outer layers 212 and 214 using conventional techniques such as RF welding. The resulting welds 233 formed between any of the layers at the points of attachment are indicated schematically in FIG. 35 by "X." Barrier layers 252 and 253 are secured together to establish an inner bladder chamber 255 providing multi-stage or multi-layer cushioning within bladder 210. Chamber 255 can include a plurality of internal channels.”, [0140], therefore, wherein 233 includes one or more holes disposed therein, annotated figure 35).
Regarding claim 36, Tawney teaches, wherein the at least one window includes a first window extending along a medial side of the midsole and a second window extending along a lateral side of the midsole, wherein the medial body is disposed adjacent to the first window and the lateral body is disposed adjacent to the second window (“Bladder 210 is constructed so that sidewalls 216 are the same size or larger than the windows exposing them, i.e., openings in the side of the midsole. The number and size of the sidewalls 216 can depend on how many windows are in the midsole of the footwear, how much of bladder 210 is intended to be exposed through each bladder window and the size of each window.”, [0138], therefore, wherein the at least one window includes a first window (not shown in figure 24) extending along a medial side of M and a second window extending along a lateral side of M, wherein the annotated medial body is disposed adjacent to the first window and the annotated lateral body is disposed adjacent to the second window, annotated figure 24).
Regarding claim 37, Tawney teaches, A cushioning element for an article of footwear (figures 24 and 33-35), the cushioning element comprising: a first barrier film and a second barrier film enclosing an internal volume (“A bladder 10' is illustrated in FIG. 24 as part of a midsole assembly for a shoe S. The shoe comprises an upper U, a insole I, a midsole assembly M and an outsole O. While the full-foot bladder 10' is shown in the drawing, any of the bladders described herein or alternative constructions thereof can be substituted in the midsole assembly. Bladder 10' can be incorporated into midsole 60 by any conventional technique such as foam encapsulation or placement in a cut-out portion of a foam midsole. A suitable foam encapsulation technique is disclosed in U.S. Pat. No. 4,219,945 to Rudy, hereby incorporated by reference.”, [0130], “The multiple film layer bladders of the present invention may also be constructed with an inverted seam along the sidewall. As shown in FIGS. 32-35, an inverted seam may be formed of the inner barrier sheets. Bladder 210 includes top, outer barrier layer 212 formed of a sheet of barrier material and a bottom, outer barrier layer 214 formed of a sheet of barrier material. Barrier layers or sheets 212 and 214 are referred to as "top barrier sheet" and "bottom barrier sheet," respectively, for ease of explanation. The use of the reference terms "top," "bottom," etc. are not intended to be limiting on the present invention, but rather are for ease of description and refer to the orientation of the bladders as shown in the figures. Layers 212 and 214 can be secured directly to each other along edge 211, as shown at the right side of FIG. 32 and in the prior embodiments, or operatively secured to each other by sidewall(s) 216, as shown in FIG. 33. Edge 211 is positioned within an article of footwear so that it is surrounded by midsole or outsole materials when the footwear is constructed, see FIG. 24.”, [0137], therefore, 210 for S, 210 comprising: 212 and 214 enclosing an internal volume, figures 24 and 33-35); a medial body; a lateral body; one or more central bodies disposed between the medial body and the lateral body (“Bladder 210 is constructed so that sidewalls 216 are the same size or larger than the windows exposing them, i.e., openings in the side of the midsole. The number and size of the sidewalls 216 can depend on how many windows are in the midsole of the footwear, how much of bladder 210 is intended to be exposed through each bladder window and the size of each window. A sidewall can be individually formed for each window or one wall can be formed for extending within and between all of the windows. For example, a bladder in the heel may be exposed by one or more windows on each side of the footwear and include the same number of sidewalls as windows.”, [0136], therefore, an annotated medial body; an annotated lateral body; one or more annotated central bodies disposed between the annotated medial body and the annotated lateral body, annotated figures 24, 33 and 34, see also [0137], [0138], and [0139]); and a web area disposed between the medial body, the lateral body, and the one or more central bodies, wherein the first barrier film and the second barrier film are coupled to one another at a peripheral seam that extends along a side surface of the cushioning element, and wherein the web area is positioned in a plane offset from a plane containing substantially all of the peripheral seam (“The multiple film layer bladders of the present invention may also be constructed with an inverted seam along the sidewall. As shown in FIGS. 32-35, an inverted seam may be formed of the inner barrier sheets. Bladder 210 includes top, outer barrier layer 212 formed of a sheet of barrier material and a bottom, outer barrier layer 214 formed of a sheet of barrier material. Barrier layers or sheets 212 and 214 are referred to as "top barrier sheet" and "bottom barrier sheet," respectively, for ease of explanation…Layers 212 and 214 can be secured directly to each other along edge 211, as shown at the right side of FIG. 32 and in the prior embodiments, or operatively secured to each other by sidewall(s) 216, as shown in FIG. 33. Edge 211 is positioned within an article of footwear so that it is surrounded by midsole or outsole materials when the footwear is constructed, see FIG. 24.”, [0137], “Bladder 210 includes tensile member 232 formed of two inner barrier layers 252, 253 formed of sheets of barrier material. Layers 252 and 253 are sealed together and extend between the inner surfaces 262 of top and bottom barrier layers 212 and 214 for maintaining the shape and contour of bladder 210. Inner layers 252,253 are secured to outer layers 212 and 214 using conventional techniques such as RF welding. The resulting welds 233 formed between any of the layers at the points of attachment are indicated schematically in FIG. 35 by "X." Barrier layers 252 and 253 are secured together to establish an inner bladder chamber 255 providing multi-stage or multi-layer cushioning within bladder 210. Chamber 255 can include a plurality of internal channels.”, [0140], therefore, 233 disposed between the annotated medial body, the annotated lateral body, and the one or more annotated central bodies, wherein 212 and 214 are coupled to one another at a 211 that extends along a side surface of 210, and wherein 233 is positioned in a plane offset from a plane containing substantially all of 211, annotated figures 24, 33 and 34, see also [0139]).
Regarding claim 38, Tawney teaches, wherein the medial body and the lateral body are each substantially J-shaped (wherein the annotated medial body and the annotated lateral body are each substantially J-shaped, annotated figure 33).
Regarding claim 40, Tawney teaches, wherein the first barrier film and the second barrier film are thermoformed (“The multiple film layer bladders of the present invention may also be constructed with an inverted seam along the sidewall. As shown in FIGS. 32-35, an inverted seam may be formed of the inner barrier sheets. Bladder 210 includes top, outer barrier layer 212 formed of a sheet of barrier material and a bottom, outer barrier layer 214 formed of a sheet of barrier material. Barrier layers or sheets 212 and 214 are referred to as "top barrier sheet" and "bottom barrier sheet," respectively, for ease of explanation. The use of the reference terms "top," "bottom," etc. are not intended to be limiting on the present invention, but rather are for ease of description and refer to the orientation of the bladders as shown in the figures. Layers 212 and 214 can be secured directly to each other along edge 211, as shown at the right side of FIG. 32 and in the prior embodiments, or operatively secured to each other by sidewall(s) 216, as shown in FIG. 33. Edge 211 is positioned within an article of footwear so that it is surrounded by midsole or outsole materials when the footwear is constructed, see FIG. 24.”, [0137], “Regarding the materials for the bladders disclosed herein, the top and bottom barrier sheets, sidewalls elements and inner barrier layers can be formed from the same or different barrier materials, such as thermoplastic elastomer films, using known methods.”, [0153], “While RF welding has been the preferred method of making the multi-stage cushioning bladders of the present invention, the particular type of attachment may vary. For instance, an adhesive bond between film layers may be used, as well as other known fusion, thermal, and ultrasonic bonding methods.”, [0162], therefore, wherein 212 and 214 are thermoformed).
Claim Rejections - 35 USC § 103
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.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Tawney et al. (2002/0139471)[Tawney] in view of Devoe et al. (2014/0250728)[Devoe].
Regarding claim 23, Tawney teaches, wherein the at least one window has a height (“Bladder 210 is constructed so that sidewalls 216 are the same size or larger than the windows exposing them, i.e., openings in the side of the midsole. The number and size of the sidewalls 216 can depend on how many windows are in the midsole of the footwear, how much of bladder 210 is intended to be exposed through each bladder window and the size of each window.”, [0138], therefore, the at least one window has a height, figure 24).
Tawney fails to teach, wherein the at least one window has a height between 8 mm and 40 mm.
Devoe, footwear with a fluid-filled chamber, Abstract, teaches, wherein the at least one window has a height between 8 mm and 40 mm (“For example, in some configurations, chamber 50 may have a height of 3/4 of an inch to 2 inches, or taller. Such a tall, transparent chamber, with minimal central structure inside the chamber may be used to form a relatively large window to see into and, in some cases, through sole structure 30 of footwear 10.”, [0098], therefore, wherein the at least one window has a height between 8 mm and 40 mm).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the at least one window of Tawney as having a height between 8 mm and 40 mm taught by Devoe in order to provide a window “to see into and, in some cases, through sole structure 30 of footwear 10”, [0098].
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Tawney et al. (2002/0139471)[Tawney] in view of Caron et al. (2014/0250728)[Caron].
Regarding claim 25, Tawney teaches, wherein the at least one window includes a transparent material that is distinct from a material of the midsole (“Bladder 10' can be incorporated into midsole 60 by any conventional technique such as foam encapsulation or placement in a cut-out portion of a foam midsole. A suitable foam encapsulation technique is disclosed in U.S. Pat. No. 4,219,945 to Rudy, hereby incorporated by reference.”, [0130], “Bladder 210 is constructed so that sidewalls 216 are the same size or larger than the windows exposing them, i.e., openings in the side of the midsole.”, [0138], therefore, wherein the at least one window includes a material and the midsole includes a material).
Tawney fails to teach, wherein the at least one window includes a transparent material that is distinct from a material of the midsole.
Caron, a sole structure with a bladder visible through a window in the sole, Abstract, teaches, wherein the at least one window includes a transparent material that is distinct from a material of the midsole (“The midsole 54 may be molded of a foam material such as thermoplastic polyurethane (TPU). The TPU material provides the article of footwear 10 with a light-weight and durable construction while concurrently providing the foot with support and stability.”, [0041], “The window 58 is a sheet of transparent or translucent polymeric material that may be substantially aligned with the apertures 74, 98 of the midsole 54 and the outsole 56, respectively, to allow the bladder 52 to be viewed while concurrently protecting the bladder 52 from damage. In some configurations, the window 58 may include lettering, logos, and/or graphics. The window 58 may be received in the recess 76 of the midsole 54 and may be adhesively bonded or otherwise secured to the inner surface 94 of the outsole 56 and/or the midsole 54. In this manner, the window 58 may be spaced apart from the bladder 52 to provide an air gap between the bladder 52 and the window 58, which provides further protection for the bladder 52. The polymeric material from which the window 58 is formed may be sufficiently durable to resist or prevent being punctured by foreign objects during use. Because the window 58 is disposed between midsole 54 and the inner surface 94 of the outsole 56, the window 58 is spaced apart from the outer surface 96a of the outsole 56.”, [0047], therefore, wherein 58 includes a transparent material that is distinct from a material of 54, figures 1-5).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the at least one window of Tawney with a transparent material that is distinct from a material of the midsole as taught by Caron in order to provide a window that allows “the bladder 52 to be viewed while concurrently protecting the bladder 52 from damage”, [0047] in which “The polymeric material from which the window 58 is formed may be sufficiently durable to resist or prevent being punctured by foreign objects during use.”, [0047].
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Tawney et al. (2002/0139471)[Tawney] in view of Rudy (5,042,176).
Regarding claim 34, Tawney teaches, the medial body, the lateral body, and the one or more central bodies (the annotated medial body, the annotated lateral body, and the one or more annotated central bodies, annotated figures 24, 33 and 34).
Tawney fails to teach, wherein the medial body, the lateral body, and the one or more central bodies, are all in fluid communication with one another.
Rudy, footwear with a fluid-filled bladder, Abstract, teaches, wherein the medial body, the lateral body, and the one or more central bodies, are all in fluid communication with one another (“In the next operation, illustrated in FIGS. 9 to 9D, the envelope 50 is processed to form multiple chambers, filled with a captive gas and sealed. As seen in FIGS. 9 and 9A, the chambers 61-66 extend between the side walls and are joined to chambers 67 and 68 (see FIG. 9C) which extend along the side walls. The various chambers are formed by R-F welding to provide webs 70 between the adjacent chambers. It is understood, however, that other form of heat sealing may be used, as is known in the art. R-F welding is preferred.”, Col. 15 ln. 42-51, “The chambers may all be in fluid communication with each other to provide an inflated cushioned heel wedge for use in footwear.”, Col. 16. Ln. 9-12, “Like the other forms of this invention, the inflated product is made of an envelope which is an improved barrier for captive gases and a permeable barrier for the mobile gases mentioned. As in the other forms, there is a peripheral chamber on the medial and lateral side and the various chambers are all interconnected.”, Col. 18 ln. 49-54, therefore, wherein the medial body, the lateral body, and the one or more central bodies, are all in fluid communication with one another, figures 9-9D).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the medial body, the lateral body, and the one or more central bodies of Tawney as being all in fluid communication with one another as taught by Rudy in order to provide a cushioning element with “intercommunicating chambers with essentially free flow of the captive gas and the mobile gas between the chambers”, Col. 18 ln. 55-57, which allows for pressure in all chambers to be the same at given time.
Claims 35 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Tawney et al. (2002/0139471)[Tawney] in view of Potter (5,406,719).
Regarding claim 35, Tawney teaches, the one or more central bodies (the one or more annotated central bodies, annotated figures 33 and 34).
Tawney fails to teach, exactly four central bodies.
Potter, footwear with fluid filled cushion elements, teaches, exactly four central bodies (“A cushioning element for use in a shoe is disclosed. The cushioning element includes four fluid-filled support chambers which are compressible but not collapsible, and which are disposed at different locations throughout the midsole of the shoe. The element also includes four variable volume fluid reservoir chambers which are collapsible to reduce the volume thereof”, Abstract, “In FIG. 9, cushioning element or bladder 510 includes four separate gas-filled post support storage chambers 512a-d. Chambers 512 compress and stiffen when a load is applied in order to provide cushioning but do not collapse upon themselves.”, Col. 7 ln. 43-47, therefore, wherein the one or more 512 includes exactly four central bodies (512a-d), figure 9).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the one or more central bodies of Tawney as exactly four central bodies as taught by Potter in order to provide a central body that provides localized cushioning and “Cushioning is provided by the confined gas in chambers 512a-d, and any load on any part of a given chamber will instantaneously increase the pressure equally throughout the whole chamber..”, Col. 8 ln. 29-32.
Regarding claim 39, Tawney teaches, the one or more central bodies (the one or more annotated central bodies, annotated figures 33 and 34).
Tawney fails to teach, exactly four central bodies.
Potter, footwear with fluid filled cushion elements, teaches, exactly four central bodies (“A cushioning element for use in a shoe is disclosed. The cushioning element includes four fluid-filled support chambers which are compressible but not collapsible, and which are disposed at different locations throughout the midsole of the shoe. The element also includes four variable volume fluid reservoir chambers which are collapsible to reduce the volume thereof”, Abstract, “In FIG. 9, cushioning element or bladder 510 includes four separate gas-filled post support storage chambers 512a-d. Chambers 512 compress and stiffen when a load is applied in order to provide cushioning but do not collapse upon themselves.”, Col. 7 ln. 43-47, therefore, wherein the one or more 512 includes exactly four central bodies (512a-d), figure 9).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the one or more central bodies of Tawney as exactly four central bodies as taught by Potter in order to provide a central body that provides localized cushioning and “Cushioning is provided by the confined gas in chambers 512a-d, and any load on any part of a given chamber will instantaneously increase the pressure equally throughout the whole chamber..”, Col. 8 ln. 29-32.
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Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
1. 2017/0035144 by Parker discloses footwear with a cushioning element having first and second barrier film layers enclosing an internal volume.
2. 5,755,001 by Potter discloses footwear with a cushioning element having first and second barrier film layers enclosing an internal volume, the midsole having first and second windows.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JILLIAN PIERORAZIO whose telephone number is (571)270-0553. The examiner can normally be reached M-F 8:30-4:30.
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, Clinton Ostrup can be reached on 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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/Jillian K Pierorazio/ Primary Examiner, Art Unit 3732