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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/21/2025 and 09/08/2025 were filed in compliance with the provisions of 37 CFR 1.97 with copy of foreign application submitted with parent application, 18/154,397. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 16 is objected to because of the following informalities: Claim 16 recites the limitation “wherin a shape” should read as “wherein a shape”. Appropriate correction is required.
Claim Interpretation
The Examiner wishes to point out product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 14-18 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by US2015/0210028 (Hansen).
Regarding Claim 14, Hansen teaches a method for a manufacturing of an outsole (abstract), the method comprising:
manufacturing a first sole segment ([0053], the shoe is manufactured using an insert and a method according to the invention where the shoe consists of an outsole);
placing a first placeholder onto a first branch of the first sole segment ([0009], the first insert may be placed for making a toe cap) and placing a second placeholder onto a second branch of the first sole segment ([0009], the next insert can then be formed in order to form a heel cap);
injection moulding a second sole segment ([0009], binding the different shoe parts together providing the sole through injection molding) such that the first placeholder and the second placeholder are each at least partially located between the first sole segment and the second sole segment ([0009]);
removing the first placeholder and the second placeholder ([0009],the last insert is removed from the mould), and
arranging a first cushion element and a second cushion element between the first sole segment and the second sole segment ([0009], the shoe part shaping inserts act as dummies during the injections and after their removal they leave a specific cavity, which is filled with another material in a later injection step, the material being of another color or another density), wherein a position of the first cushion element at least partially corresponds to the position where the first placeholder was placed, and wherein a position of the second cushion element at least partially corresponds to the position where the second placeholder was placed ([0009], the second material is filed into the cavity formed by the inserts).
Regarding Claim 15, Hansen teaches the method of claim 14, wherein injection moulding the second sole segment at least partially connects the first sole segment and the second sole segment ([0009], binding the different shoe parts together providing the sole through injection molding).
Regarding Claim 16, Hansen teaches the method of claim 14, wherin a shape of the first placeholder corresponds to a shape of the first cushion element and a shape of the second placeholder corresponds to a shape of the second cushion element ([0009], the shoe part shaping inserts act as dummies during the injections and after their removal they leave a specific cavity, which is filled with another material in a later injection step, the material being of another color or another density. Thus, they are shape corresponded with each other).
Regarding Claim 17, Hansen teaches the method of claim 14, wherein the first branch of the first sole element at least partially houses the first cushion element and a second branch of the first sole element at least partially houses the second cushion element ([0009], the shoe part shaping inserts act as dummies during the injections and after their removal they leave a specific cavity, which is filled with another material in a later injection step, the material being of another color or another density. Thus, they are shape corresponded with each other).
Regarding Claim 18, Hansen teaches the method of claim 17, wherein the first placeholder provides a cavity in the first branch, and the second placeholder provides a cavity in the second branch ([0009], the shoe part shaping inserts act as dummies during the injections and after their removal they leave a specific cavity, which is filled with another material in a later injection step, the material being of another color or another density).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-4, 9-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over US2015/0210028 (Hansen) and US2006/0110487 (“Bergmann).
Regarding Claim 1, Hansen teaches a method for manufacturing of an outsole (abstract), the method comprising:
manufacturing a first sole segment ([0053], the shoe is manufactured using an insert and a method according to the invention where the shoe consists of an outsole);
placing a first placeholder onto the first sole segment ([0009], the first insert may be placed for making a toe cap) and placing a second placeholder onto the first sole segment ([0009], the next insert can then be formed in order to form a heel cap);
injection moulding a second sole segment such that the first sole segment and the second sole segment are at least partially connected ([0009], binding the different shoe parts together providing the sole through injection molding) and such that the first placeholder and the second placeholder are each at least partially located between the first sole segment and the second sole segment ([0009]);
removing the first placeholder and the second placeholder ([0009],the last insert is removed from the mould), and
arranging a first cushion element and a second cushion element between the first sole segment and the second sole segment ([0009], the shoe part shaping inserts act as dummies during the injections and after their removal they leave a specific cavity, which is filled with another material in a later injection step, the material being of another color or another density), wherein a position of the first cushion element at least partially corresponds to the position where the first placeholder was placed, and wherein a position of the second cushion element at least partially corresponds to the position where the second placeholder was placed ([0009], the second material is filed into the cavity formed by the inserts).
Hansen fails to explicitly teach placing a first placeholder onto a medial part of the first sole segment and placing a second placeholder onto a lateral part of the first sole segment; injection moulding a second sole segment such that the first sole segment and the second sole segment are at least partially connected and such that the first placeholder and the second placeholder are each at least partially located between the first sole segment and the second sole segment.
However, Bergmann teaches placing a first placeholder onto a medial part of the first sole segment ([0020], a first removable insert forms at least a substantial portion of a medial side wall of the first recess and at least a substantial portion of a medial side wall of the second recess) and placing a second placeholder onto a lateral part of the first sole segment ([0020], a second removable insert forms at least a substantial portion of a lateral side wall of the first recess and defines an exterior surface of a lateral side wall of a first sole formed in the first cavity).
Hansen and Bergmann are considered to be analogous to the claimed invention because both are in the same field of using injection molding with removable insert to form sole product. 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 method as taught by Hansen such that it teaches all of the above mentioned limitations as taught by Bergmann to reduce the setup time and manufacturing costs for producing various types of soles ([0023]). Furthermore, the combination of the known elements provides a predictable result, namely, another known way to implement insert at the desired location to form desired shape. See MPEP 2143.
Regarding Claim 2, the modified Hansen teaches the method of claim 1, wherein manufacturing the first sole segment comprises one or more of injection moulding (Hansen, [0053]), 3D-printing, or compression moulding.
Regarding Claim 3, the modified Hansen teaches the method of claim 1, comprising placing the first sole segment into a mould (Hansen, Figure 2, mould 31 and [0054]) and allowing the first sole segment to remain in the mould during injection moulding of the second sole segment (Figure 2 and [0056], the insole is placed within the mould when the second sole segment is manufactured on top of the insert).
Regarding Claim 4, the modified Hansen teaches the method of claim 1, wherein a shape of the first placeholder corresponds to a shape of the first cushion element and a shape of the second placeholder corresponds to a shape of the second cushion element (Hansen, [0009], the shoe part shaping inserts act as dummies during the injections and after their removal they leave a specific cavity, which is filled with another material in a later injection step, the material being of another color or another density. Thus, the second material is filed into the cavity formed by the inserts and they are shape equivalent).
Regarding Claim 9, the modified Hansen teaches the method of claim 1, wherein a first branch of the first sole element at least partially houses the first cushion element and a second branch of the first sole element at least partially houses the second cushion element (Hansen, [0009], the shoe part shaping inserts act as dummies during the injections and after their removal they leave a specific cavity, which is filled with another material in a later injection step, the material being of another color or another density and the second material is filed into the cavity formed by the inserts and formed the cushion elements).
Regarding Claim 10, the modified Hansen teaches the method of claim 9, wherein the first placeholder provides a cavity in the first branch, and the second placeholder provides a cavity in the second branch (Hansen, [0009], the shoe part shaping inserts act as dummies during the injections and after their removal they leave a specific cavity, which is filled with another material in a later injection step, the material being of another color or another density and the second material is filed into the cavity formed by the inserts and formed the cushion elements).
Regarding Claim 12, the modified Hansen teaches the method of claim 1, wherein the first cushion element and the second cushion element are adhered to the first sole segment (Hansen, [0012]).
Claim(s) 5-8, 11, 13, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over US2015/0210028 (Hansen) and US2006/0110487 (“Bergmann) as applied to claim 1 above, and further in view of US2018/0213886 (“Connell et al” hereinafter Connell).
Regarding Claim 5, the modified Hansen teaches the method of claim 1, but fails to teach wherein, after injection moulding the second sole segment, the second sole segment comprises: a fixed portion connected to the first sole segment; and at least one movable portion which is movable relative to the first sole segment such that a distance between the at least one movable portion and the first sole segment can be changed.
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However, Connell teaches after injection moulding the second sole segment ([0133]), the second sole segment (see annotated Figure 2) comprises: a fixed portion connected to the first sole segment (Figure 2, plate 42 is fixed in position) ; and at least one movable portion which is movable relative to the first sole segment (Figure 17, outsole 38b move in a direction toward the plate 42 [0168]) such that a distance between the at least one movable portion and the first sole segment can be changed ([0168]).
Hansen and Connell are considered to be analogous to the claimed invention because both are in the same field of using injection molding with removable insert to form sole product. 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 method as taught by Hansen such that it teaches all of the above mentioned limitations as taught by Connell to provide the user with a degree of comfort and protection during use of the article of footwear ([0168]). Furthermore, product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. Thus, once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to Applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. See MPEP 2113 (II).
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Regarding Claim 6, the modified Hansen teaches the method of claim 5, wherein the at least one movable portion comprises a first movable portion and a second movable portion (Connell, see annotated Figure 17), wherein the first movable portion overlaps the first placeholder and the second movable portion overlaps the second placeholder (Figure 17 and [0167], the placeholders formed the plurality of cavity portion 112 which overlap with first and second movable portion) .
Regarding Claim 7, the modified Hansen teaches the method of claim 5, wherein removing the first placeholder and the second placeholder (Hansen, [0009]) comprises changing the distance between the at least one movable portion and the first sole segment (when a solid object, such as an insert, is removed from the mold, it creates a force that will inevitably moves the movable portion as supported by Connell [0168]).
Regarding Claim 8, the modified Hansen teaches the method of claim 5, wherein arranging the first cushion element and the second cushion element between the first sole segment and the second sole segment comprises changing the distance between the at least one movable portion and the first sole segment (Connell, [0168]).
Regarding Claim 11, the modified Hansen teaches the method of claim 5, wherein the fixed portion is arranged in one or more of a toe portion of the outsole or a mid-foot portion of the outsole (Connell, Figure 2 and [0122], plate 42 that extends from an anterior end of the article of footwear 10 towards a posterior end).
Regarding Claim 13, the modified Hansen teaches the method of claim 5, wherein the at least one movable portion is adhered to one or more of the first sole segment, the first cushion element, or the second cushion element (Connell, Figure 17 and [0120] and [0185]).
Regarding Claim 19, the modified Hansen teaches the method of claim 1, but fails to teach wherein the second sole segment comprises: a fixed portion connected to the first sole segment; and at least one movable portion which is movable relative to the first sole segment such that a distance between the at least one movable portion and the first sole segment can be changed.
However, Connell teaches wherein the second sole segment (see annotated Figure 2) comprises: a fixed portion connected to the first sole segment (Figure 2, plate 42 is fixed in position); and at least one movable portion which is movable relative to the first sole segment (Figure 17, outsole 38b move in a direction toward the plate 42 [0168]) such that a distance between the at least one movable portion and the first sole segment can be changed ([0168]).
Hansen and Connell are considered to be analogous to the claimed invention because both are in the same field of using injection molding with removable insert to form sole product. 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 method as taught by Hansen such that it teaches all of the above mentioned limitations as taught by Connell to provide the user with a degree of comfort and protection during use of the article of footwear ([0168]). Furthermore, product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. Thus, once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to Applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. See MPEP 2113 (II).
Regarding Claim 20, the modified Hansen teaches the method of claim 19, wherein the at least one movable portion comprises a first movable portion and a second movable portion (Connell, see annotated Figure 17), wherein the first movable portion overlaps the first placeholder and the second movable portion overlaps the second placeholder (Figure 17 and [0167], the placeholders formed the plurality of cavity portion 112 which overlap with first and second movable portion) .
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to XINWEN (Cindy) YE whose telephone number is (571)272-3010. The examiner can normally be reached Monday - Thursday 8:30 - 17:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Susan Leong can be reached at (571) 270-1487. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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XINWEN (CINDY) YE
Examiner
Art Unit 1754
/FARAH TAUFIQ/Primary Examiner, Art Unit 1754
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