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 .
Election/Restrictions
Applicant’s election without traverse of Species A in the reply filed on 06/08/2026 is acknowledged.
Further, claim 19 is withdrawn as being directed to non-elected Species C (intersecting sipes).
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 (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.
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 13-14, 16-18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2011/0214313 A1 to James.
For claim 13, James discloses an article of footwear (abstract), comprising: an upper (12); and a sole (13), the sole comprising: a first sipe extending through the sole (18), the first sipe comprising: a first sidewall face (19a), a second sidewall face opposite the first sidewall face (19b), and an interior edge where the first sidewall face and the second sidewall face converge (upper edge of 19a and 19b); wherein at least a first portion of the first sidewall face adjacent the interior edge is in contact with a second portion of the second sidewall face adjacent the interior edge when the article of footwear is in an unworn resting state (para 0032).
For claim 14, James discloses the article of footwear of claim 13, wherein the first sidewall face is rotatable away from the second sidewall face about the interior edge (para 0034).
For claim 16, James discloses the article of footwear of claim 13, wherein the first sidewall face has a first contour, and the second sidewall face comprises a second contour that mirrors the first contour (planar, see fig. 13).
For claim 17, James discloses the article of footwear of claim 13, wherein the sole comprises a medial edge and a lateral edge, and the first sipe extends through the medial edge and the lateral edge (fig. 13).
For claim 18, James discloses the article of footwear of claim 17, wherein the sole comprises a second sipe extending from the medial edge to the lateral edge (fig. 4 and 13).
For claim 20, James discloses the article of footwear of claim 13, but does not specifically disclose wherein the first sipe is formed by a reciprocating blade with a plain cutting edge. However, it is noted by the Examiner that the limitation “formed by a reciprocating blade with a plain cutting edge” is interpreted as a product-by-process because it is defining the product formed by a process (reciprocating blade cutting). As such, “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself, and 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." See MPEP 2113(I). In this case, the product formed by reciprocating blade cutting is simply a sipe and James discloses this feature.
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 (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.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over James in view of US 2023/0066374 A1 to Tateno.
For claim 1, James discloses an article of footwear (abstract), comprising: an upper (12); and a sole structure (13); the sole structure comprising: a midsole (16); an outsole (15) attached to the midsole along an interface and comprising a ground-facing surface (boundary between 16 and 15); and a first sipe extending from the ground-facing surface through the outsole into the midsole (18, fig. 4) and comprising a first sidewall face (19a), the first sidewall face comprising: a first midsole portion (midsole portion of 19a); a first outsole portion (outsole portion of 19a).
James does not specifically disclose a first plurality of striations, each of the first plurality of striations traversing the interface without a change in orientation.
However, attention is directed to Tateno teaching an article of footwear with analogous cuts in the sole portion (abstract of Tateno). Specifically, Tateno teaches a plurality of striations (40a, 40b, 40c) extending longitudinally transversely through a cut portion (40d) of the sole (fig. 10d). In other examples, Tateno teaches a longitudinal striations (40a) extends partly on the lower part of the midsole (fig. 11b) or the upper part of the outsole (fig. 12b). Tateno also teaches a given striation extends though an interference of both the midsole and the outsole (para 0131 of Tateno). Tateno provides the striations (“cuts”) promote shear deformation on the sole when load is applied so that impact buffering properties can be improved (para 0010 of Tateno). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein James is modified to comprise a first plurality of striations, each of the first plurality of striations traversing the interface without a change in orientation and traversing across the laterally extending sipes for purpose of promoting shear deformation on the sole when load is applied so that impact buffering properties can be improved, as taught by Tateno (para 0010 of Tateno).
For claim 2, the modified James teaches the article of footwear of claim 1, wherein the first sipe further comprises a second sidewall face facing the first sidewall face (19b), the second sidewall face comprising a second plurality of striations, each of the second plurality of striations matching one of the first plurality of striations (see discussion for claim 1 above and teachings of Tateno wherein the plurality of striations traverse longitudinally across the laterally extending sipes).
For claim 3, the modified James teaches the article of footwear of claim 2, wherein the second sidewall face comprises a second midsole portion and a second outsole portion, and the first outsole portion is in contact with the second outsole portion when the article of footwear is in an unworn resting state (para 0032).
For claim 4, the modified James teaches the article of footwear of claim 2, wherein the first sidewall face and the second sidewall face converge at an interior
edge within the midsole (upper boundary of 19a and 19b).
The above embodiment of James does not specifically disclose wherein the interior edge having a nonlinear profile.
However, in a separate embodiments, James does teach the grooves, and therefore the “edge,” can have non-liner axis and may be curved or wavy (para 0031) for purposes of providing the specific resiliency and/or flexibility performance (para 0028). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the above embodiment of James is modified to wherein the interior edge has a nonlinear profile (curved or wavy) for purposes of providing the specific resiliency and/or flexibility performance, as taught by James (paras 0028 and 0031 of James).
For claim 5, the modified James teaches the article of footwear of claim 1, wherein the first sipe extends from a lateral side of the sole structure to a medial side of the sole structure (see fig. 13).
For claim 6, the modified James teaches the article of footwear of claim 5, wherein the first sipe is one of a plurality of sipes extending from the lateral side of the sole structure to a medial side of the sole structure (see fig. 4).
Claim 7-9 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over James in view of US 9,089,184 B1 to Kiser.
For claim 7, James teaches an article of footwear (abstract), comprising: an upper (12); and a sole structure (13), the sole structure comprising: a midsole (16) comprising a foam (para 0027); and a first sipe extending into the midsole (18, fig. 4), the first sipe comprising a first sidewall (19a) and a second sidewall opposite the first sidewall (19b).
James does not specifically disclose the midsole is defined by a plurality of cell walls and wherein the first sidewall and the second sidewall bisect at least one of the plurality of cell walls.
However, attention is directed to Kiser teaching an article of footwear with an analogous sipe (18). Specifically, Kiser teach the sipe comprises a cavity (38) extending concavely into first and second sidewalls of the sipe (walls of cavity 38) in the form of a hinge-slot (para 2B) for purposes of providing a reduced cross sectional area about the hinge section and creating a more flexible section about the hinge section (col. 4, lines 22-35 of Kiser). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein James would be modified to comprise what can be considered cell walls (closed circular section, fig. 4 of Kiser) in the form of cavity walls of a hinge along the walls of each sipe for purposes of providing a reduced cross sectional area about the hinge section and creating a more flexible section about the hinge section, as taught by Kiser (col. 4, lines 22-35 of Kiser).
For claim 8, the modified James teaches the article of footwear of claim 7, wherein the midsole comprises a first cell wall previously defining a first closed cell, with a first portion of the first cell wall disposed on the first sidewall and a second portion of the first cell wall disposed on the second sidewall (see discussion for claim 7 above and teachings of Kiser).
For claim 9, the modified James teaches the article of footwear of claim 8, wherein the first sipe has a kerf width of less than 1 micrometer when the article of footwear is in an unworn resting state (para 0032).
For claim 11, the modified James teaches the article of footwear of claim 7, wherein the sole structure further comprises an outsole attached to the midsole and comprising a ground-facing surface, and the first sipe extends through the outsole into the midsole (fig. 4).
For claim 12, the modified James teaches the article of footwear of claim 11, wherein the first sidewall and the second sidewall bisect an integrally-formed portion of the outsole (fig. 4).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over James.
For claim 15, James discloses the article of footwear of claim 14, but does not specifically disclose wherein the interior edge comprises an irregular profile.
However, in a separate embodiments, James does teach the grooves, and therefore the “edge,” can have non-liner axis and may be curved or wavy (para 0031) for purposes of providing the specific resiliency and/or flexibility performance (para 0028). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the above embodiment of James is modified to wherein the interior edge has an irregular profile (curved or wavy) for purposes of providing the specific resiliency and/or flexibility performance, as taught by James (paras 0028 and 0031 of James).
Allowable Subject Matter
Claim 10 is 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICK I LOPEZ whose telephone number is (571)272-3262. The examiner can normally be reached Monday - Friday: 9:00am - 5:30pm EST.
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/ERICK I LOPEZ/Examiner, Art Unit 3732
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