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 .
Claim Rejections - 35 USC § 112
Claims 1-7,9-16 and 18-20 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
In claims 1 and 11, the phrase “a first aperture extending…through the first surface” is inaccurate, unclear and indefinite. The aperture (48) doesn’t extend through the first surface (top surface 36) of the midsole (50,52). The plate (34) extends over the second aperture (48) and between (50,52).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-7,9-16 and 18-20, as understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0093040 (Yoshida) in view of US 2023/0013126 (Moretti).
Regarding claims 1-7 and 9-10, Yoshida discloses a sole structure (Sk; see figures 15-22) for an article of footwear (Sp) having an upper (U), the sole structure comprising:
a midsole (upper midsole S2 and lower midsole S2’) including a first surface opposing the upper and a second surface formed on an opposite side of the midsole than the first surface and defining a ground-engaging surface, the midsole including an second aperture (Cushioning holes (Ch; see figure 15 and figure 22) (i) formed through and defined by a material of the midsole, (ii) extending from a medial side of the midsole to a lateral side of the midsole, and (iii) tapering in height in a direction extending from a heel region of the sole structure to a forefoot region of the sole structure (see figure 15 showing the hole (Ch) tapering as claimed).
Yoshida lacks teaching a first aperture extending through the second surface in a direction toward the upper and through the first surface.
Moretti teaches a shoe sole with full-thickness vertical holes (20) to reduce weight and increase flexibility. Therefore, these holes (20) extend through the second ground contacting surface and through the first surface opposing the upper.
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 sole as taught by Yoshida, with full-thickness vertical holes, as taught by Moretti, to reduce weight and increase flexibility.
Regarding claim [2. (Original) The sole structure of Claim 1, wherein the midsole includes an upper portion and a lower portion, the upper portion being attached to the lower portion at a junction.]; see S2 and S2’ of Yoshida .
Regarding claim [3. (Original) The sole structure of Claim 2, wherein the upper portion defines the first surface and the lower portion defines the second surface.]; see upper and lower surface of S2 of Yoshida.
Regarding claim [4. (Original) The sole structure of Claim 2, wherein the upper portion defines a first portion of the second aperture and the lower portion defines a second portion of the aperture.]; see figure 22 of Yoshida.
Regarding claim [5. (Original) The sole structure of Claim 4, wherein the first portion includes a different shape than the second portion.]; at least see figure 22 showing S2 and S2’ of Yoshida which has different shapes.
Regarding claim [6. (Original) The sole structure of Claim 1, wherein the material of the midsole comprises foam.]; at least see ¶0086,0148 and claim 5
Regarding claim [7. (Original) The sole structure of Claim 1, further comprising a plate disposed within the midsole.]; see structure S1.
Regarding claim [9.The sole structure of Claim 1, wherein the second aperture is disposed in a midfoot region of the sole structure.]; see figure 15; showing the middle most aperture in the midfoot region.
Regarding claim [10. (Original) An article of footwear incorporating the sole structure of Claim 1.]; see figure 15.
Regarding claims 11-16 and 18-20, Yoshida discloses a sole structure (Sk; see figures 15-22) for an article of footwear (Sp) having an upper (U), the sole structure comprising:
a midsole including an upper portion (upper midsole S2) defining a first surface opposing the upper and a lower portion (lower midsole S2’) defining a second surface formed on an opposite side of the midsole than the first surface and defining a ground-engaging surface, the midsole including a second aperture (Cushioning holes (Ch; see figure 15 and figure 22) (i) formed through and defined by a material of the midsole, (ii) extending from a medial side of the midsole to a lateral side of the midsole, and (iii) defined by opposing surfaces of the upper portion and the lower portion (see figure 15 showing the hole (Ch) between the upper portion (S2) and the lower portion (S2’)).
Yoshida lacks teaching a first aperture extending through the second surface in a direction toward the upper and through the first surface.
Moretti teaches a shoe sole with full-thickness vertical holes (20) to reduce weight and increase flexibility. Therefore, these holes (20) extend through the second ground contacting surface and through the first surface opposing the upper.
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 sole as taught by Yoshida, with full-thickness vertical holes, as taught by Moretti, to reduce weight and increase flexibility.
Regarding claim [12. The sole structure of Claim 11, wherein the upper portion is attached to the lower portion at a junction, the upper portion being spaced apart from the lower portion at the junction to define the second aperture.]; see figure 22 of Yoshida.
Regarding claim [13. (Original) The sole structure of Claim 11, wherein the upper portion includes a third surface formed on an opposite side of the upper portion than the first surface and the lower portion includes a fourth surface formed on an opposite side of the lower portion than the second surface, the third surface being attached to the fourth surface at a junction.]; at least see figures 15,22 and ¶0101-0103 of Yoshida.
Regarding claim [14. The sole structure of Claim 13, wherein the third surface is spaced apart from the fourth surface at the junction to define the second aperture.]; see figure 22 of Yoshida.
Regarding claim [15. (Original) The sole structure of Claim 13, wherein the third surface includes a first length measured in a first direction extending from a heel region of the sole structure to a forefoot region of the sole structure and the fourth surface includes a second length measured in the first direction and being greater than the first length.]; Yoshida teaches: the fourth surface has at least one length extending from a heel region to the sole region that is greater than one length of the third surface as measured in a first direction as claimed.
Regarding claim [16. (Original) The sole structure of Claim 11, wherein the material of the midsole comprises foam.]; at least see ¶0086,0148 and claim 5 of Yoshida.
Regarding claim [18. The sole structure of Claim 11, wherein the second aperture is disposed in a midfoot region of the sole structure.]; see figure 15 of Yoshida; showing the middle most aperture in the midfoot region.
Regarding claim [19. The sole structure of Claim 11, wherein the second aperture tapers in a direction extending from a heel region of the sole structure to a forefoot region of the sole structure.]; at least see figure 15 of Yoshida.
Regarding claim [20. (Original) An article of footwear incorporating the sole structure of Claim 11.]; see figure 15 of Yoshida.
Claim(s) 1-6,9-10,11-16,18,19 and 20, as understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0267306 (Sakaguchi).in view of US 2023/0013126 (Moretti).
Regarding claims 1-6,9-10, Sakaguchi discloses a sole structure (1) for an article of footwear (100) having an upper (9), the sole structure comprising:
a midsole (20 (21,23)) including a first surface opposing the upper and a second surface formed on an opposite side of the midsole than the first surface and defining a ground-engaging surface, the midsole including a second aperture (40) (i) formed through and defined by a material of the midsole, (ii) extending from a medial side of the midsole to a lateral side of the midsole, and (iii) tapering in height in a direction extending from a heel region of the sole structure to a forefoot region of the sole structure (see figure 1 showing the aperture (40)) tapering as claimed).
Sakaguchi lacks teaching a first aperture extending through the second surface in a direction toward the upper and through the first surface.
Moretti teaches a shoe sole with full-thickness vertical holes (20) to reduce weight and increase flexibility. Therefore, these holes (20) extend through the second ground contacting surface and through the first surface opposing the upper.
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 sole as taught by Sakaguchi, with full-thickness vertical holes, as taught by Moretti, to reduce weight and increase flexibility.
Regarding claim [2. (Original) The sole structure of Claim 1, wherein the midsole includes an upper portion and a lower portion, the upper portion being attached to the lower portion at a junction.]; see 21 and 23 of Sakaguchi.
Regarding claim [3. (Original) The sole structure of Claim 2, wherein the upper portion defines the first surface and the lower portion defines the second surface.]; see upper and lower surface of 23 of Sakaguchi.
Regarding claim [4. The sole structure of Claim 2, wherein the upper portion defines a first portion of the second aperture and the lower portion defines a second portion of the aperture.]; see figures 1-2 of Sakaguchi.
Regarding claim [5. (Original) The sole structure of Claim 4, wherein the first portion includes a different shape than the second portion.]; at least see figures 3-4D showing 21 and 23 with different shapes; of Sakaguchi.
Regarding claim [6. (Original) The sole structure of Claim 1, wherein the material of the midsole comprises foam.]; at least see ¶0043 of Sakaguchi.
Regarding claim 11-16 and 18-20, Sakaguchi discloses a sole structure (1) for an article of footwear (100) having an upper (9), the sole structure comprising:
a midsole including an upper portion (upper midsole 23) defining a first surface opposing the upper and a lower portion (lower midsole 21) defining a second surface formed on an opposite side of the midsole than the first surface and defining a ground-engaging surface, the midsole including a second aperture (40) (i) formed through and defined by a material of the midsole, (ii) extending from a medial side of the midsole to a lateral side of the midsole, and (iii) defined by opposing surfaces of the upper portion and the lower portion (see figure 1).
Sakaguchi lacks teaching a first aperture extending through the second surface in a direction toward the upper and through the first surface.
Moretti teaches a shoe sole with full-thickness vertical holes (20) to reduce weight and increase flexibility. Therefore, these holes (20) extend through the second ground contacting surface and through the first surface opposing the upper.
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 sole as taught by Sakaguchi, with full-thickness vertical holes, as taught by Moretti, to reduce weight and increase flexibility.
Regarding claim [12. The sole structure of Claim 11, wherein the upper portion is attached to the lower portion at a junction, the upper portion being spaced apart from the lower portion at the junction to define the second aperture.]; at least see figures 1 and 3 of Sakaguchi.
Regarding claim [13. (Original) The sole structure of Claim 11, wherein the upper portion includes a third surface formed on an opposite side of the upper portion than the first surface and the lower portion includes a fourth surface formed on an opposite side of the lower portion than the second surface, the third surface being attached to the fourth surface at a junction.]; at least see figures 1-4D of Sakaguchi.
Regarding claim [14. The sole structure of Claim 13, wherein the third surface is spaced apart from the fourth surface at the junction to define the second aperture.]; at least see figures 1 and 3 of Sakaguchi.
Regarding claim [15. (Original) The sole structure of Claim 13, wherein the third surface includes a first length measured in a first direction extending from a heel region of the sole structure to a forefoot region of the sole structure and the fourth surface includes a second length measured in the first direction and being greater than the first length. The fourth surface of Sakaguchi has at least one length extending from a heel region to the sole region that is greater than one length of the third surface as measured in a first direction as claimed.
Regarding claim [16. (Original) The sole structure of Claim 11, wherein the material of the midsole comprises foam.]; at least see ¶0043 of Sakaguchi.
Regarding claim [18. The sole structure of Claim 11, wherein the second aperture is disposed in a midfoot region of the sole structure.]; see figure 1 of Sakaguchi.
Regarding claim [19. The sole structure of Claim 11, wherein the second aperture tapers in a direction extending from a heel region of the sole structure to a forefoot region of the sole structure.]; at least see figure 1 of Sakaguchi.
Regarding claim [20. (Original) An article of footwear incorporating the sole structure of Claim 11.]; see figure 1 of Sakaguchi.
Response to Arguments
Applicant's arguments filed 9/8/2026 have been fully considered but they are not persuasive.
Applicant amendment adding an additional aperture to the claims negated added reference (Moretti ‘126) to the prior art rejection above. The examiner agrees that the first aperture as now claimed is lacking in Yoshida and Sakaguchi and that is why Moretti reference was added.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art cited and not relied upon by the Examiner for the above rejections are considered to be pertinent in that the references cited are considered to be the nearest prior art to the subject matter defined in the claims as required by MPEP707.05.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Applicant is duly reminded that a complete response must satisfy the requirements of 37 C.F. R. 1.111, including:
-“The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.”
--“A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.”
-Moreover, “The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP 2163.06” MPEP 714.02. The “disclosure” includes the claims, the specification and the drawings.
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/Ted Kavanaugh/
Primary Patent Examiner
Art Unit 3732
Tel: (571) 272-4556
Prosecution Insights