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
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because the drawings are not in compliance with:
a. 37 CFR § 1.84 (a)(1): Black and white drawings are normally required. India ink, or its equivalent that secures solid black lines, must be used for drawings.
b. 37 CFR § 1.84 (b)(1): Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent
In this case, the gray scale drawings and solid darkened areas make it difficult to determine certain depicted elements. For example, it is difficult to determine the layering, wherein certain line indicators end in darkened areas, where certain layers start and/or being, and where certain features are super imposed on other layers. It is suggested only solid black lines are used and gray scale or darkened/blackened areas, as a result of using a photograph of CAD drawings, are avoided for purposes of sufficient reproducibility.
Election/Restrictions
Applicant’s election without traverse of Species A encompassing claim 1, 2, 4-10, and 12-16 in the reply filed on 04/17/2026 is acknowledged.
Claims 3, 11, and 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/17/2026.
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, 4-7, 10, 12, 13, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2014/0101816 A1 to Toronjo.
For claim 1, Toronjo discloses an article of footwear (para 0064) that includes an upper (para 0108), the upper comprising:
a base layer (20, 22) that includes:
a first layer (22), and
a second layer (20) that is a series of cushioning elements that extend outward from the first layer (24); and
a top layer (32) that is partially connected to a perimeter of the base layer such that a void (28) is disposed between the base layer and the top layer (see fig. 2F below),
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wherein at least one of the cushioning elements (24) of the series of cushioning elements is located within the void defined between the base layer and the top layer (see fig. 2F above).
For claim 2, Toronjo 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 (see fig. 2F above).
For claim 4, Toronjo 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 that is between about 1.5 millimeters and about 2.5 millimeters (2 mm para 0078), 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 (para 0078).
For claim 5, Toronjo discloses the article of footwear of claim 4, wherein at least one cushioning element of the series of cushioning elements defines a depth that is between about 1.8 millimeters and about 2.2 millimeters (2 mm para 0078).
For claim 6, Toronjo discloses the article of footwear of claim 4, wherein at least one cushioning element of the series of cushioning elements defines a major axis (y) and a minor axis (z) that is shorter than the major axis (para 0078), 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 (fig. 16A).
for claim 7, Toronjo discloses an article of footwear (para 0064) that includes an upper (para 0108), the upper comprising:
a base layer (20, 22) that includes:
a first layer (22), and
a second layer (20) that is a series of cushioning elements that extend from the first layer (24); and
a top layer (32) that is partially connected to a perimeter of the base layer such that a void (28) is defined between the base layer and the top layer (see fig. 2F below)
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within which the series of cushioning elements is disposed (see fig. 2F above).
For claim 10, Toronjo discloses the article of footwear of claim 7, wherein only a portion of the series of cushioning elements is located within the void (see fig. 2F below and the void may be measured from only part of the cross section shown).
For claim 12, Toronjo discloses the article of footwear of claim 7, wherein the series of cushioning elements is arranged in a cushioning element pattern that includes a series of rows that extend from a medial side of the article of footwear to a lateral side of the article of footwear (see fig. 16A).
For claim 13, Toronjo discloses the article of footwear of claim 12, wherein the cushioning element pattern includes between 20 and 40 rows (fig. 16a).
For claim 16, Toronjo discloses an article of footwear (para 0064), comprising: a sole structure (154); and an upper (para 0108) that is attached to the sole structure (fig. 15a) and comprises: a base layer (20, 22) that includes: a first layer (22), and a second layer (20) that comprises a series of cushioning elements arranged in a cushioning element pattern (24); and a top layer (32) that is partially connected to a perimeter of the base layer such that a void (28) is defined between the base layer and the top layer that the series of cushioning elements is located within (see fig. 2F below).
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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 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Toronjo as applied to claim 7 above, and further in view of US 2015/0359290 A1 to Podhajny.
For claim 8, Toronjo discloses the article of footwear of claim 7, wherein the first layer of the base layer includes a first section (160, fig. 16c) that is made of an elastane material (para 0085) and a second section (162, fig. 16c).
Toronjo does not specifically disclose wherein the second section is made of a knitted material. However, Toronjo does teach the material forming the second section is preferably a two-way stretch fabric (paras 0131-0132) or different sections of the upper may include different types of material to control stretch characteristics (para 0134).
Attention is also directed to Podhajny teaching an upper for an article of footwear (Abstract of Podhajny). Specifically, Podhajny teaches the midfoot region can include a knitted portion that can stretch at the midfoot for providing flexure to the wearer’s foot due to impact with the ground and for other reasons (paras 0117-0118 of Podhajny). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the section (162) of Toronjo would be modified to include a knitted stretch materials at the midfoot for providing flexure to the wearer’s foot due to impact with the ground, as taught by Podhajny (paras 0117-0118 of Podhajny).
For claim 9, the modified Toronjo teaches the article of footwear of claim 8, wherein 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 (para 0132).
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Toronjo.
For claim 14, Toronjo teaches the article of footwear of claim 13, but does not specifically disclose wherein the cushioning element pattern includes more rows on the lateral side of the article of footwear than on the medial side of the article of footwear.
However, Toronjo does teach the cells are formed in rows and can vary somewhat in size and shape depending on the needs of the wearer (paras 0077-0078). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the cushioning element pattern includes more rows on the lateral side of the article of footwear than on the medial side of the article of footwear since adjusting number of elements would involve adjusting the size of each element on a respective side it has bee generally recognized ca being withing the level of ordinary skill in the art (see MPEP 2144.04). It is further noted that applicant’s disclosure fails to provide details of criticality or unexpected results with respect to the difference in number of elements on each side of the upper.
For claim 15, the modified Toronjo teaches the article of footwear of claim 14, wherein the article of footwear is configured to be a cleat and includes a plurality of cleats that extend from a sole structure (para 0123).
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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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
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