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 November 18, 2025 in which claims 1-20 are presented for examination.
Drawings
The drawings are objected to because Figures 1A, 1B, 1C, 1D, 2A, 2B, 2C, 4A, 5A, 5B, and 6A each contain more than one figure within the figure numbers. Each Figure should be labeled with a separate figure number (see 37 C.F.R. 1.84(u) or be provided with connecting lead lines or brackets to show how the parts are interconnected.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
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.
Claim 15 and 18-19 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 pre-AIA the applicant regards as the invention.
Claim 15 recites “wherein at least one of said one or more protuberances has a shore hardness of between 30 and 90 Sh-A and the outsole has a shore hardness of between 20 Sh-00 and 80 Sh-D”, which is indefinite since it is unclear as to what abbreviations Sh-A, Sh-00 and Sh-D are referencing. Undefined abbreviations are indefinite since the claim does not define what the abbreviations are supposed to mean. Applicant is reminded that though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim, see MPEP 2111.01(ll).
Claim 18 recites “wherein a depth of the recess varies thereacross.”, which is indefinite since it is unclear as to what “there across” is referring to. Examiner suggests using claim language that clearly defines the structures and how they relate to one another. For purposes of examination, examiner is interpreting the limitation as the recess varies across the outsole, as best understood.
All dependent claims are rejected for depending from a rejected base claim.
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 1-3, 7-8, 12-14, and 16-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chaney et al. (2011/0232127)[Chaney].
Regarding claim 1, Chaney teaches, A footwear comprising: an outsole having an outer surface with a recess formed therein; a hardening layer disposed within the recess and configured to increase rigidity of the outsole in the region of the recess; and one or more protuberances attached to the outsole within the recess and being in contact with the hardening layer, each of the one or more protuberances having a peak extending outwards from the recess so as to provide a ground-engaging surface during stance (10 comprising: 12 having an annotated outer surface with 14 formed therein ([0060]); 22 disposed within 14 and configured to increase rigidity of 12 in the region of 14 ([0070]); and one or more annotated protuberances attached to 12 within the recess and being in contact with 22, each of the one or more annotated protuberances having an annotated peak extending outwards from 14 so as to provide a ground-engaging surface during stance ([0061])).
Regarding claim 2, Chaney teaches, wherein the hardening layer is configured to cover a side wall of the recess (wherein 22 is configured to cover a side wall of 14, [0060], [0069], [0070], figures 1-3).
Regarding claim 3, Chaney teaches, wherein the hardening layer comprises a rim extending outwardly from the recess and surrounding a perimeter thereof (wherein 22 comprises a rim extending outwardly from 14 and surrounding a perimeter thereof, [0060], [0069], [0070], figures 1-3).
Regarding claim 7, Chaney teaches, wherein at least one of said one or more protuberances comprises one or more openings and is detachably attached to the outsole using one or more connectors, through said one or more openings (wherein at least one of said one or more annotated protuberances comprises one or more 42 and is detachably attached to 12 using one or more 40, through said one or more 42, [0073], figures 3 and 6).
Regarding claim 8, Chaney teaches, wherein a base of said one or more protuberances occupies at least 50% of an area of the recess and has a perimeter fitting a perimeter of the recess with a gap therealong (wherein a base of said one or more annotated protuberances occupies at least 50% of an area of 14 and has a perimeter fitting a perimeter of 16 of 14 with a gap (gap “a”, [0060]) therealong, [0060], [0070], figures 1-6).
Regarding claim 12, Chaney teaches, wherein an outer contour of at least one of said one or more protuberances form, together with an outer contour of the outsole, a continuous curvature (wherein an outer contour of at least one of said one or more annotated protuberances form, together with an outer contour of 12, a continuous curvature, figures 1-2).
Regarding claim 13, Chaney teaches, wherein the hardening layer comprises a rim extending outwardly from the recess and surrounding a perimeter thereof, said rim forming a continuous curvature with the outer contour of said one or more protuberances and the outer contour of the outsole (wherein 22 comprises a rim extending outwardly from 14 and surrounding a perimeter thereof, said rim forming a continuous curvature with the outer contour of said one or more annotated protuberances and the outer contour of 12, figures 1-6, [0060], [0069], [0070], [0071], figures 1-3).
Regarding claim 14, Chaney teaches, wherein said continuous curvature is continuous across at least one of: (a) a longitudinal cross-section of the footwear; and (b) a lateral cross-section of the footwear (wherein said continuous curvature is continuous across at least one of: (a) a longitudinal cross-section of the footwear; and (b) a lateral cross-section of 10, figures 1-6).
Regarding claim 16, Chaney teaches, wherein the hardening layer has a shore hardness of between 20Sh-A and 90Sh-D (“The flaps are somewhat harder than the remainder of the sidewall. For example, the flaps may have a hardness of between 90 and 95 Shore A Durometer and the remainder of the sidewalk may have a hardness of between 80 and 85 Shore A Durometer. These numbers are intended to be example Durometers, and Durometers of varying degree may be appropriate, depending on the specific application to be pursued.”, [0070], therefore, wherein 16 has a shore hardness of between 20Sh-A and 90Sh-D).
Regarding claim 17, Chaney teaches, wherein the hardening layer has a shore hardness at least 5% higher than that of the outsole (“The flaps are somewhat harder than the remainder of the sidewall. For example, the flaps may have a hardness of between 90 and 95 Shore A Durometer and the remainder of the sidewalk may have a hardness of between 80 and 85 Shore A Durometer. These numbers are intended to be example Durometers, and Durometers of varying degree may be appropriate, depending on the specific application to be pursued.”, [0070], therefore, wherein the 22 has a shore hardness at least 5% higher than that of 12).
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.
Claims 9, 10 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Chaney et al. (2011/0232127)[Chaney].
Regarding claim 9, Chaney teaches, wherein a width of said gap is between about 0.1 and about 2 mm (“The sidewall may have a thickness "a", which for some embodiments might be about one-quarter inch. This is just an example dimension and persons skilled in the art will appreciate from the teachings herein a range of other dimensions may apply.”, [0060], therefore, wherein a width of said gap “a” (gap of the perimeter 16 of the recess 14) is about 6.35 mm, figure 2, [0061], ).
Regarding claim language “a width said gap is between about 0.1 and about 2 mm”, Even though Chaney does not specifically disclose a width of the gap being between about 0.1 and about 2 mm as claimed, Chaney does disclose the gap as 6.35 mm and further discloses that “This is just an example dimension and persons skilled in the art will appreciate from the teachings herein a range of other dimensions may apply”. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to experiment with different ranges of ratio for the gap dimension in order to achieve an optimal configuration, since discovering the optimum or workable ranges of the dimension for the gap involves only routine skill in the art. In re Aller, 105 USPQ 233. Here, by making the gap between about 0.1 and about 2 mm, provides a thin gap that allows the perimeter fitting of the base to be fit with the perimeter of the recess.
Regarding claim 10, Chaney teaches, wherein at least one of said one or more protuberances has a harder lower portion facing the recess and an upper portion comprising said peak (“The base layer or other sole unit construction may also support other elements, such as a cushioning element 101 on the same or an opposite surface. The base layer, as well as other sole assembly components may be made from various plastic or rubber materials, such as ABS, Hytrel, Pebax, PVC, polyurethanes, Nylons, including Nylon 6 and Nylon 12, thermoplastic urethanes, EVA, carbon and glass fiber composites, rubbers, spring metals, etc. The base layer as a distinct component is optional and a single unit may be formed or constructed that provides multiple sole unit functions in a monolithic structure. For example, this could be achieved by known co-molding or over-molding processes where materials of different material properties or structures are joined together. In such constructions, the tab 28 could be integral with the rest of the sole unit.”, [0066], “As noted above, the sole unit may be made from any single or combination of materials used or usable in the construction of soles. These materials include rubbers, foams, elastomers, visco-elastomers, plastics, natural and synthetic leathers, textiles, woods, fibers and metals. In a simple construction, the sole unit may have a flexibility that is similar to that of the sole unit receiver 12. However, the sole unit may be replaced with another construction to provide greater or lesser flexibility, according to the demands of a particular user or intended use. The sole unit may also be replaced with another construction to provide customized support functions. For example, a sole unit may be provided with more support on a medial side to help a runner whose foot pronates. Likewise a sole unit may be provided with more support on a lateral side to compensate for a runner whose foot supinates. Additionally, the sole unit could be constructed with a material that provides resistance to environmental conditions such as sharp objects or corrosive chemicals for safety in work places where such conditions may be present.”, [0062], therefore, wherein at least one of said one or more annotated protuberances has a harder lower portion facing the 14 and an upper portion comprising said annotated peak).
Regarding claim language “at least one of said one or more protuberances a softer upper portion comprising said peak”, even though Chaney does not specifically disclose at least one of said one or more protuberances having a softer upper portion comprising said peak as claimed, Chaney does disclose materials for the one or more protuberances and further discloses that “the sole unit may be replaced with another construction to provide greater or lesser flexibility, according to the demands of a particular user or intended use. The sole unit may also be replaced with another construction to provide customized support functions”. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention have provided the lower portion facing the recess and upper portion comprising the peak of the at least one of said one or more protuberances of Cheney as having a harder lower portion and a softer upper portion, since it is within the general skill of a worker in the art to select a preferred material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07. In this case, by making the upper portion comprising the peak a softer upper portion, would provide cushion for the user during ambulation.
Regarding claim 20, Chaney teaches, wherein at least one of said one or more protuberances at the peak thereof is at least higher than a maximum depth of the recess (“The sole unit may have the same thickness as the thickness of the sidewall so that the sole unit and sole unit receiver have a flush surface for purpose of ground contact. The sole unit may also be designed in whole or part to vary in elevation from the sole unit receiver. For example, a heel portion may be raised to provide a boot heel or a central portion might be recessed to provide certain cushioning functionality that is based on the greater collapsibility of the relatively raised perimeter to the recessed central portion.”, [0061], therefore, wherein at least one of said one or more annotated protuberances at the peak thereof is at least 10% higher than a maximum depth of 14).
Regarding claim language “at least 10% higher than a maximum depth of the recess”, even though Chaney does not specifically disclose the at least one of said one or more annotated protuberances at the peak as being at least 10% higher than a maximum depth of the recess as claimed, Chaney does disclose “The sole unit may also be designed in whole or part to vary in elevation from the sole unit receiver. For example, a heel portion may be raised to provide a boot heel or a central portion might be recessed to provide certain cushioning functionality that is based on the greater collapsibility of the relatively raised perimeter to the recessed central portion.” Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention have provided the at least one of said one or more protuberances at the peak at least 10% higher than a maximum depth of the recess of Cheney, since it is within the general skill of a worker in the art to select a preferred material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07. Here, as Chaney discloses the heel portion is raised to provide a boot heel and making the boot heel least 10% higher than a maximum depth of the recess provides the user with footwear with a raised heel.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Chaney et al. (2011/0232127)[Chaney] in view of Litchfield et al. (2010/0251565)[Litchfield].
Regarding claim 11, Chaney teach, wherein at least one of said one or more protuberances comprises one or more deformable materials allowing deformation of at least 10% of an original shape of a respective protuberance under an application of an external pressure (“As noted above, the sole unit may be made from any single or combination of materials used or usable in the construction of soles. These materials include rubbers, foams, elastomers, visco-elastomers, plastics, natural and synthetic leathers, textiles, woods, fibers and metals. In a simple construction, the sole unit may have a flexibility that is similar to that of the sole unit receiver 12. However, the sole unit may be replaced with another construction to provide greater or lesser flexibility, according to the demands of a particular user or intended use”, [0062], wherein at least one of said one or more annotated protuberances comprises one or more materials allowing deformation of a respective protuberance under an application of an external pressure).
Chaney fails to teach, wherein at least one of said one or more protuberances comprises one or more deformable materials allowing deformation of at least 10% of an original shape of a respective protuberance under an application of an external pressure.
Litchfield teaches, wherein at least one of said one or more protuberances comprises one or more deformable materials allowing deformation of at least 10% of an original shape of a respective protuberance under an application of an external pressure (“Resilient insert 200 can be formed of a suitably resilient material so that it can compress with the application of force and expand with the delivery of a material (e.g., a fluid, a gel, a paste, or flowable particles), while also resisting breakdown.”, [0082], “It is preferred that the resilient inserts are relatively soft and easily compressed so that the sole is unstable in a controlled manner and requires the wearer to use muscles to correct for stability or energy loss. To achieve this, the resilient inserts are made of a plastic, such as described above, that is relatively soft but that is still hard enough to be resilient and provide the chambers with controlled compressibility”, [0146], therefore, wherein at least one of said one or more protuberances comprises one or more deformable materials allowing deformation of at least 10% of an original shape of a respective protuberance under an application of an external pressure).
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 of said one or more protuberances of Cheney with one or more deformable materials allowing deformation of at least 10% of an original shape as taught by Litchfield to in order to provide one of more perturbances that are “relatively soft and easily compressed so that the sole is unstable in a controlled manner and requires the wearer to use muscles to correct for stability or energy loss.”, [0146].
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Chaney et al. (2011/0232127)[Chaney] in view of Litchfield et al. (2014/0215849)[Litchfield].
Regarding claim 15, Chaney teaches, wherein at least one of said one or more protuberances has a hardness (“As noted above, the sole unit may be made from any single or combination of materials used or usable in the construction of soles. These materials include rubbers, foams, elastomers, visco-elastomers, plastics, natural and synthetic leathers, textiles, woods, fibers and metals. In a simple construction, the sole unit may have a flexibility that is similar to that of the sole unit receiver 12. However, the sole unit may be replaced with another construction to provide greater or lesser flexibility, according to the demands of a particular user or intended use”, [0062], wherein at least one of said one or more annotated protuberances has a hardness) and the outsole has a shore hardness of between 20 Sh-00 and 80 Sh-D (“The flaps are somewhat harder than the remainder of the sidewall. For example, the flaps may have a hardness of between 90 and 95 Shore A Durometer and the remainder of the sidewalk may have a hardness of between 80 and 85 Shore A Durometer. These numbers are intended to be example Durometers, and Durometers of varying degree may be appropriate, depending on the specific application to be pursued.”, [0070], therefore, and 16 (which includes 22) has a shore hardness of between 20 Sh-00 and 80 Sh-D).
Chaney fails to teach, wherein at least one of said one or more protuberances has a shore hardness of between 30 and 90 Sh-A.
Litchfield teaches, wherein at least one of said one or more protuberances has a shore hardness of between 30 and 90 Sh-A (“the heel and forefoot resilient inserts are preferably made of thermoplastic elastomer. In one embodiment, the resilient inserts can be made of about 85-98 Shore A TPU, and in other embodiments the resilient inserts are made of TPU of about 88 to about 96 Shore A, about 90 to about 95 Shore A, or about 95 Shore A”, [0144], therefore, wherein at least one of said one or more protuberances has a shore hardness of between 30 and 90 Sh-A).
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 of said one or more protuberances of Cheney with a shore hardness of between 30 and 90 Sh-A as taught by Litchfield to in order to provide one of more perturbances that are elastic providing the user comfort, flexibility, and shock absorption, which are properties of 85-98 Shore A TPU.
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Allowable Subject Matter
Claims 4-6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 4 recites “wherein the hardening layer comprises one or more openings”, in which modifying the hardening layer of Chaney as claimed would make the footwear of Chaney function differently and would necessitate improper hindsight reasoning.
Claims 18-19 have not been rejected with prior art. Claim 18 recites “wherein a depth of the recess varies there across”, see 112b above and examiners interpretation above. Modifying the depth of the recess of Chaney to be varied across the outsole would make the footwear of Chaney function differently and would necessitate improper hindsight reasoning.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
1. 2018/0168279 by Mor discloses footwear with an outsole with a recess and hardening layer and one or more protuberances attached to the outsole within a recess.
2. 6,389,712 by Schelling discloses footwear with an outsole with a recess and one or more protuberances attached to the outsole within a recess.
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Ostrup can be reached at 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
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