CTNF 19/363,326 CTNF 84962 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Election/Restrictions 08-25-01 AIA Applicant’s election without traverse of Species 1 (Fig. 1-4) in the reply filed on 04/13/2026 is acknowledged. Specification 07-29 AIA The disclosure is objected to because of the following informalities: Paragraph [0092] recites “Fig. 11A-19A” and “Figs. 19A and 19B.” There is no Fig. 19A or 19B, it the appears the phrases should read --Fig. 11A-18B-- and --Figs. 18A and 18B --. Appropriate correction is required. Claim Rejections - 35 USC § 112 07-30-02 AIA The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 07-34-01 Claims 2-16 and 18-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claims 2 and 10 recite the limitation “the first cushioning layer has a greater compressive strain rate than the second cushioning layer/support structure in a first load range” in lines 1-2. Claims 3 and 11 recite the limitation “the second cushioning layer/support structure has a greater compressive strain rate than the first cushioning layer in a second load range greater than the first load range” in lines 1-3. Claims 4 and 12 recite the limitation “the first cushioning layer is configured to compress within a first load range and the second cushioning layer/support structure is configured to not compress in the first load range” in lines 1-3 Claims 5 and 13 recite the limitation “the second cushioning layer/support structure is configured to compress within a second load range greater than the first load range and the first cushioning layer is configured to not compress within the second load range” in lines 1-3. Claims 6 and 14 recite the limitation “the first cushioning layer and the second cushioning layer/support structure are both configured to compress within a third load range greater than the second load range” in lines 1-2. Claim 9 recites the limitation “a cushioning layer … having a different strain rate than the support structure” in lines 5-6. Claim 18 recites the limitation “the support structure has a first compressive strain rate within a first load range and a second compressive strain rate less than the first compressive strain rate at a second load range greater than the first load range.” Claim 19 recites the limitation “the support structure has a third compressive strain rate greater than the second compressive strain rate within a third load range greater than the second load range.” These limitations are unclear because they merely state a function without providing any indication about how the function is performed. The recited function does not follow from the structure recited in the claim, i.e. support structure, so it is unclear whether the function require some other structure or is simply the result of certain load being applied to the support structure. Moreover, it is not clear what applicant means by "load range". Claims 7, 15, and 20 recite the limitation “the support structure has an energy return efficiency of at least 80%.” These limitations are unclear because they merely state a function without providing any indication about how the function is performed. The recited function does not follow from the structure recited in the claim, i.e. support structure, so it is unclear whether the function require some other structure or is simply the result of certain load being applied to the support structure. Claims 8 and 16 recite the limitation “the second cushioning layer has a greater linearity than the first cushioning layer.” Claim 15 recites the limitation “the support structure has … a linearity of at least 1.0.” Claim 20 recites the limitation “the support structure has … a linearity of at least 0.9.” These limitations are unclear because they merely state a function without providing any indication about how the function is performed. The recited function does not follow from the structure recited in the claim, i.e. support structure, so it is unclear whether the function require some other structure or is simply the result of certain load being applied to the support structure. Double Patenting 08-33 AIA 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. 08-35 Claim s 1, 9, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-20 of copending Application No. 19/363074 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the co-pending application . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. 08-35 Claim s 1, 9, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-20 of copending Application No. 19/323231 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the co-pending application . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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 (i.e., changing from AIA to pre-AIA) 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-12-aia AIA (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. 07-15-aia AIA Claim(s) 1 and 17 is/are rejected under 35 U.S.C. 102 (a)(1) and (a)(2) as being anticipated by Baghdadi et al. (US 2024/0225182), herein Baghdadi . Regarding claim 1 , Baghdadi discloses a sole structure for an article of footwear, the sole structure comprising: a first cushioning layer (160) including a resilient polymeric material; and a second cushioning layer including a support structure (120) having a base (132), a platform (130) axially spaced from the base, and a plurality of flexible struts (122) extending between the base and the platform and configured to deflect when a compressive force is applied to at least one of the platform or the base (paragraphs 0070, 0071, 0073, 0085-0086; Fig. 1, 2D). Regarding claim 17 , Baghdadi discloses a sole structure for an article of footwear, the sole structure comprising :a cushioning layer (160) including a resilient polymeric material; and a support structure (120) disposed within the cushioning layer and having a base (132), a platform (130) axially spaced from the base, and a plurality of flexible struts (122) extending between the base and the platform and configured to flex when a compressive force is applied to at least one of the platform or the base (paragraphs 0070, 0071, 0073, 0085-0086; Fig. 1, 2D) . 07-15-aia AIA Claim(s) 1 and 17 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Barnes et al. (US 2015/0033581), herein Barnes . Regarding claim 1 , Barnes discloses a sole structure for an article of footwear, the sole structure comprising: a first cushioning layer (32) including a resilient polymeric material; and a second cushioning layer including a support structure (38) having a base (44), a platform (42) axially spaced from the base, and a plurality of flexible struts (46) extending between the base and the platform and configured to deflect when a compressive force is applied to at least one of the platform or the base (paragraphs 0034-0037, 0041-0042, 0046; Fig. 1-5). Regarding claim 17 , Barnes discloses a sole structure for an article of footwear, the sole structure comprising :a cushioning layer (32) including a resilient polymeric material; and a support structure (38) disposed within the cushioning layer and having a base (44), a platform (42) axially spaced from the base, and a plurality of flexible struts (46) extending between the base and the platform and configured to flex when a compressive force is applied to at least one of the platform or the base (paragraphs 0034-0037, 0041-0042, 0046; Fig. 1-5) . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 2-16 and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baghdadi, as applied to claims 1 and 17 . Regarding claim 9 , Baghdadi discloses a sole structure for an article of footwear, the sole structure comprising: a support structure (38) having a base (44), a platform (42) axially spaced from the base, and a plurality of flexible struts (46) extending between the base and the platform and configured to deflect when a compressive force is applied to at least one of the platform or the base (Fig. 4-5); and a cushioning layer (32) disposed adjacent to at least one of the base and the platform (paragraphs 0034-0037, 0041-0042, 0046; Fig. 1-5). Baghdadi discloses that the cushioning layer is formed of a slab foam material (paragraph 0083), and the support structure is formed of a dual density truss structure (paragraphs 0029-0031), but does not explicitly disclose the cushioning layer having a different strain rate than the support structure. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the cushioning layer with a different strain rate than the support structure in order to provide different support and cushioning characteristics at the different layers of the sole. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin , 125 USPQ 416. Regarding claims 2 and 10 , Baghdadi does not explicitly disclose that the first cushioning layer has a greater compressive strain rate than the second cushioning layer/support structure in a first load range. However, Baghdadi discloses that the two layers have different structures and materials. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the first cushioning layer with a greater compressive strain rate than the second cushioning layer/support structure in a first load range (such as the foam of the first cushioning layer being compressed while the struts of the support structure remain unbent), in order to provide specific support and cushioning to the foot within a first load range. The claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller , 105 USPQ 233. Regarding claims 3 and 11 , Baghdadi does not explicitly disclose that the second cushioning layer/support structure has a greater compressive strain rate than the first cushioning layer in a second load range greater than the first load range. However, Baghdadi discloses that the two layers have different structures and materials. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the second cushioning layer/support structure with a greater compressive strain rate than the first cushioning layer in a second load range greater than the first load range (such as the support structure struts collapsing while the foam of the first cushioning layer remains relatively uncompressed), in order to provide specific support and cushioning to the foot within a second load range. The claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller , 105 USPQ 233. Regarding claims 4 and 12 , Baghdadi does not explicitly disclose that the first cushioning layer is configured to compress within a first load range and the second cushioning layer/support structure is configured to not compress in the first load range. However, Baghdadi discloses that the first cushioning layer is composed of a slab foam material and the support structure is composed of a truss structure. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form a sole structure such that the first cushioning layer is configured to compress within a first load range and the second cushioning layer/support structure is configured to not compress in the first load range (such as the foam of the first cushioning layer being compressed while the struts of the support structure remain unbent), in order to provide specific support and cushioning to the foot within a first load range. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin , 125 USPQ 416. Regarding claims 5 and 13 , Baghdadi does not explicitly disclose that the second cushioning layer/support structure is configured to compress within a second load range greater than the first load range and the first cushioning layer is configured to not compress within the second load range. However, Baghdadi discloses that the first cushioning layer is composed of a slab foam material and the support structure is composed of a truss structure. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form a sole structure such that the second cushioning layer/support structure is configured to compress within a second load range greater than the first load range and the first cushioning layer is configured to not compress within the second load range (such as the support structure struts collapsing while the foam of the first cushioning layer remains relatively uncompressed), in order to provide specific support and cushioning to the foot within a second load range. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin , 125 USPQ 416. Regarding claims 6 and 14 , Baghdadi does not explicitly disclose that the first cushioning layer and the second cushioning layer/support structure are both configured to compress within a third load range greater than the second load range. However, Baghdadi discloses that the first cushioning layer is composed of a slab foam material and the support structure is composed of a truss structure. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form a sole structure such that the first cushioning layer and the second cushioning layer/support structure are both configured to compress within a third load range greater than the second load range (such as the support structure struts further collapsing while the foam of the first cushioning layer is also compressed), in order to provide specific support and cushioning to the foot within a second load range. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin , 125 USPQ 416. Regarding claims 7, 15, and 20 , Baghdadi does not explicitly disclose the energy return efficiency of the support structure. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the support structure such that it has an energy return efficiency of at least 80%, in order to provide cushioning and comfort to the foot of the user. The claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller , 105 USPQ 233. Regarding claims 8, 15, 16, and 20 , Baghdadi does not disclose the linearity of the first cushioning layer or support structure. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the linearity of the support structure at least 1.0 or 0.9, and greater than that of the first cushioning layer, in order to provide cushioning and comfort to the foot of the user. The claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller , 105 USPQ 233. Regarding claims 18 and 19 , Baghdadi does not disclose the compressive strain rate of the support structure. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the support structure such that it has a first compressive strain rate within a first load range, a second compressive strain rate less than the first compressive strain rate at a second load range greater than the first load range, and a third compressive strain rate greater than the second compressive strain rate within a third load range greater than the second load range (such as the struts remaining unbent under a first load range, the struts collapsing under a second load range, and the struts being fully collapsed and compressed under a third load range), in order to provide specific support and cushioning to the foot within various load ranges. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin , 125 USPQ 416 . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARON M PRANGE whose telephone number is (571)270-5280. The examiner can normally be reached M-F 8:30-5 EST. 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, Khoa Huynh can be reached at (571) 272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /SHARON M PRANGE/ Primary Examiner, Art Unit 3732 Application/Control Number: 19/363,326 Page 2 Art Unit: 3732
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