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 .
Drawings
The drawings were received on 09/02/2026. These drawings are acceptable and are hereby entered.
Response to Amendment
The amendments filed with the written response received on 09/02/2026 have been considered and an action on the merits follows. As directed by the amendment, claims 1, 7, and 16 have been amended; claims 8-9 are canceled; claims 3, 11, 17-20 are withdrawn from further consideration; and claim 21 has been added. Accordingly, claims 1-7 and 10-21 are pending in this application, with an action on the merits to follow regarding claims 1-2, 4-7, 10, 12-16, and 21.
Because of the applicant's amendment, the following in the office action filed 06/04/2026, are hereby withdrawn: the drawing objections.
Election/Restrictions
Claim 16 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species G (fig. 25), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/17/2026. Claim 16 has been amended to include a mesh layer. However, the mesh layer appears to be directed to non-elected Species G (fig. 25) (see paras 0079-0080 of applicant’s specification), and therefore cannot be considered as being directed to elected Species A.
Claim Objections
Claim 5 is objected to because of the following informalities:
Claim 5 recites “a depth.” It is suggested the claim is rephrased to recite “the depth” for consistency with the rest of the claim and/or for antecedent basis purposes.
Appropriate correction is required.
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 1, 2, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 11,839,262 B2 to Adami.
For claim 1, Adami discloses an article of footwear (10) that includes an upper (100), the upper comprising:
a base layer (120) that includes:
a first layer (136), and
a second layer (140, 138) that is a series of cushioning elements that extend outward from the first layer (fig. 5) (140 and adjacent portions of layer 138 considered exposed cushioning elements); and
a top layer (122) that includes:
a third layer (body of layer 122) that is partially connected to a perimeter of the base layer (see figs. 4A and 5, perimeter measured around given openings 128) such that a void (voids, col. 7, lines 16-36) is disposed between the base layer and the top layer (see fig. 4B, as an example wherein “between” is measured diagonally), the third layer including an aperture (128) exposing at least one of the cushioning elements therethrough (140 and adjacent portions of layer 138 considered exposed cushioning elements),
wherein at least one of the cushioning elements of the series of cushioning elements is located within the void defined between the base layer and the top layer (see fig. 4A, as an example, wherein the portions interpreted as the cushioning elements are located within the void).
For claim 2, Adami discloses the article of footwear of claim 1, wherein at least one of the cushioning elements of the series of cushioning elements has a rectangular cross section (elements 140, fig. 5).
For claim 21, Adami discloses the article of footwear of claim 1, wherein the third layer includes only a single aperture exposing at least one of the cushioning elements therethrough (It is noted that claim 1 uses the transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps, see MPEP 2111.03. As such, Adami’s aperture, for example 128f in fig. 5, is considered a “single aperture” of the plurality of other apertures (128) exposing at least one of the cushioning elements therethrough, and therefore reads on the limitation. The presence of additional apertures does not preclude the prior art from satisfying the limitation because the claim depends from a claim using the transitional phrase “comprising,” which does not exclude additional unrecited apertures).
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 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Adami as applied to claim 1 above, and further in view of US 2021/0227924 A1 to Oroszi.
For claim 4, Adami discloses the article of footwear of claim 1, wherein at least one of the cushioning elements of the series of cushioning elements defines a depth, and wherein the depth of at least one of the cushioning elements is measured from a centrally located inner point of the cushioning element and a centrally located outer point of the cushioning element (thickness at center of 140 and adjacent portions of layer 138 considered exposed cushioning elements).
Adami does not specifically disclose wherein the depth is between about 1.5 millimeters and about 2.5 millimeters.
However, attention is directed to Oroszi teaching an analogous sports shoe with a pattern comprising isles (20) having a height or thickness of between 0.4 mm to 3mm for purposes of providing traction or grip when against other elements, including balls (abstract and para 0041 of Oroszi). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein Adami would be modified wherein the defined cushioning elements have a depth/thickness of between 0.4 mm to 3mm for purposes of providing traction or grip when against other elements, including balls (abstract and para 0041 of Oroszi). Therefore, the modified Adami teaches the general conditions of the claim. It would have been further obvious to one of ordinary skill in the art before the effective filing date wherein the modified Adami would be further modified wherein the thickness is between about 1.5 millimeters and about 2.5 millimeters since it is not inventive to discover the optimum or workable range by routine experimentation (See MPEP 2144.05(II)). In this case, there are relevant facts for supporting a modification to the claimed range by routine optimization. Specifically, providing the claimed thickness in the exposed cushioning elements would predictably balance traction against other elements, like balls, and providing adequate levels of cushioning during impacts.
For claim 5, the modified Adami teaches the article of footwear of claim 4, wherein at least one cushioning element of the series of cushioning elements defines a depth, but does not specifically disclose wherein the depth is between about 1.8 millimeters and about 2.2 millimeters. However, the modified Adami teaches the general conditions of the claim. It would have been further obvious to one of ordinary skill in the art before the effective filing date wherein the modified Adami would be modified wherein the thickness is between about 1.8 millimeters and about 2.2 millimeters since it is not inventive to discover the optimum or workable range by routine experimentation (See MPEP 2144.05(II)). In this case, there are relevant facts for supporting a modification to the claimed range by routine optimization. Specifically, providing the claimed thickness in the exposed cushioning elements would predictably balance traction against other elements, like balls, and providing adequate levels of cushioning during impacts.
For claim 6, the modified Adami discloses the article of footwear of claim 4, wherein at least one cushioning element of the series of cushioning elements defines a major axis and a minor axis that is shorter than the major axis, and wherein the major axis extends in a medial-lateral direction from a medial side to a lateral side of the article of footwear, and the minor axis extends in a heel-toe direction from a heel end to a toe end of the article of footwear (See fig. 5, and element 140f, as an example describing the disclosed dimensions for the cushioning elements).
Allowable Subject Matter
Claims 7, 10, and 12-15 are allowable over the cited prior art of record.
Claim 7 recites, in part, an article of footwear that includes an upper. The upper includes a base layer that includes a first layer and a second layer, the second layer being a series of cushioning elements that extend from the first layer. The upper further includes a top layer that is partially connected to a perimeter of the base layer such that a void is defined between the base layer and the top layer within which the series of cushioning elements is disposed. The first layer of the base layer includes a first section that includes an elastane material and a second section that includes a knitted material. The first section is located in a forefoot region of the article of footwear and the second section is located in a midfoot region of the article of footwear.
The current and previously cited prior art fails to teach or suggest the base layer and top layer, as currently claimed, and further including the first layer of the base layer including a first section comprising an elastane material and a second section comprising a knitted material such that the first section is located in a forefoot region of the article of footwear and the second section is located in a midfoot region of the article of footwear. Further, the previously cited Podhajny and Toronjo also fail to teach or suggest a first layer of a base layer including a first section comprising an elastane material and a second section comprising a knitted material such that the first section is located in a forefoot region of the article of footwear and the second section is located in a midfoot region of the article of footwear. Modifying each of these references to comprises the upper configuration and functionality would not only be a hindsight reconstruction based on applicant’s disclosure, but would also likely render the functions of each of these cited references as inoperable for their intended purposes.
Conclusion
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.
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.
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.
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/ERICK I LOPEZ/Examiner, Art Unit 3732
