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 1: Fig.1-5 in the reply filed on June 18, 2026 is acknowledged.
After a full review of Applicant’s disclosure, Claims 11, 17 & 18 are withdrawn from consideration as they are drawn to a non-elected Species not shown in the instant application. Species 1: Fig.1-5 does not depict the padding element and the rigid cage are assembled such that at least a portion of the textile layer overlaps an exterior surface of the rigid cage; particularly as Claim 9 (from which 11 depends) recites the padding element is disposed between a textile layer of the upper and the rigid cage, which directly contradicts the limitations of Claim 11. Species 1: Fig.1-5 does not depict an additional padding element with an additional rigid cage, as recited in Claims 17 & 18. Claims 1-10, 12-16 and 19-20 are currently pending.
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.
1. Claim(s) 1-3, 8, 12-16, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Van Atta (US 2017/0164683).
Regarding Claim 1, Van Atta discloses a method of making an article of footwear, the method comprising: obtaining a foot scan map comprising standard deviation values for variations in foot contour measured for a group of individuals (para.63-68; i.e. varying protrusion sizes by tuning to a user is producing/obtaining a foot scan map, inasmuch as has been claimed by Applicant, additionally multiple people having the footwear tuned to their needs is a “group of individuals”); forming a padding element (150/410; para.37), the padding element comprising: a base layer (152) comprising an exterior surface (158/422) and an interior surface (160/430) disposed opposite the exterior surface (as seen in Fig.3-4, 6 & 10-11); and a plurality of projections (162/420), each of the plurality of projections comprising: an exterior protrusion (183/460) extending from the exterior surface of the base layer; and an interior protrusion (185/440) extending from the interior surface of the base layer, wherein at least one of a height or an effective diameter of respective interior protrusions varies based on the standard deviation values from the foot scan map (para.63-65); and assembling the padding element with a rigid cage (120; para.27; i.e. the textile of 120 has some level of rigidity in order to form a three dimensional structure that stands upright and, therefore, is a rigid cage inasmuch as has been claimed by Applicant) for the article of footwear such that the exterior protrusions of the plurality of projections are disposed within corresponding openings (144/424) formed in the rigid cage (as seen in Fig.6 & 10).
Regarding Claim 2, Van Atta discloses a method of claim 1, further comprising: isolating a rearfoot portion of the foot scan map (as seen in Fig.11, 536 is in a “rearfoot portion”), wherein the at least one of a height or an effective diameter of the respective interior protrusions varies based on the standard deviation values of the isolated rearfoot portion of the foot scan map (para.63-68; as seen in Fig.10).
Regarding Claim 3, Van Atta discloses a method of claim 2, wherein the padding element and the rigid cage are assembled in a rearfoot portion of the article of footwear (as seen in Fig.11, 536 is in a “rearfoot portion” of the footwear) corresponding to the isolated rearfoot portion of the foot scan map (para.63-68).
Regarding Claim 8, Van Atta discloses a method of claim 1, wherein the group of individuals comprises a biometric characteristic, the biometric characteristic being one of heel striking, midfoot striking, forefoot striking, pronating, or supinating (para.63-65; i.e. foot striking).
Regarding Claim 12, Van Atta discloses a method of claim 1, wherein the padding element (150/410) and the rigid cage (120) are assembled such that one or more of the exterior protrusions (183/460) extends exteriorly from one or more of the corresponding openings formed in the rigid cage (as seen in Fig.2, 6 & 9-10).
Regarding Claim 13, Van Atta discloses a method of claim 1, wherein the padding element (150/410) and the rigid cage (120) are assembled such that exterior-facing surfaces (i.e. sidewalls of 183/460) of the exterior protrusions are disposed interiorly from an exterior surface of the rigid cage (as seen in Fig.9).
Regarding Claim 14, Van Atta discloses a method of claim 1, wherein the padding element (150/410) and the rigid cage (120) are assembled such that the interior protrusions (185/440) define at least a portion of an interior surface of the article of footwear (as seen in Fig.6 & 9-10).
Regarding Claim 15, Van Atta discloses a method of claim 14, wherein the plurality of projections (162/420) is configured such that the projections are displaced along axes of the corresponding openings formed in the rigid cage when a wearer's foot contacts the interior protrusions (as seen in Fig.9).
Regarding Claim 16, Van Atta discloses a method of claim 1, wherein the rigid cage (120) is integrally formed (para.28) with a sole (110) of the article of footwear as a single piece (as seen in Fig.1).
Regarding Claim 20, Van Atta discloses a method of making an article of footwear, the method comprising: forming a padding element (150/410; para.37), the padding element comprising: a base layer (152) comprising an exterior surface (158/422) and an interior surface (160/430) disposed opposite the exterior surface (as seen in Fig.3-4, 6 & 10-11); and a plurality of projections (162/420), each of the plurality of projections comprising: an exterior protrusion (183/460) extending from the exterior surface of the base layer; and an interior protrusion (185/440) extending from the interior surface of the base layer; and assembling the padding element with a rigid cage (120; para.27; i.e. the textile of 120 has some level of rigidity in order to form a three dimensional structure that stands upright and, therefore, is a rigid cage inasmuch as has been claimed by Applicant) for the article of footwear such that the exterior protrusions of the plurality of projections are disposed within corresponding openings (144/424) formed in the rigid cage (as seen in Fig.6 & 10).
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.
The factual inquiries 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.
2. Claim(s) 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Van Atta (US 2017/0164683) in view of Beard (US 10,638,927).
Regarding Claim 4, Van Atta discloses the invention substantially as claimed above. Van Atta does not disclose further comprising flattening the foot scan map into a flat foot scan map. However, Beard teaches a method of producing a foot scan map and flattening the foot scan map into a flat foot scan map (Col.2, line 66-Col.3, line 17 & Col.4, lines 11-27).
Therefore, it would have been obvious to one having ordinary skill in the art to have enhanced the map of Van Atta by producing a foot scan map and flattening the foot scan map into a flat foot can map, as taught by Beard, in order to provide customized footwear that delivers enhanced, individualized support and comfort to a user when wearing the shoe.
Regarding Claim 5, When in combination, Van Atta and Beard teach a method of claim 4, further comprising populating the flat foot scan map with graphical projections representing an arrangement of the plurality of projections on the base layer of the padding element (Van Atta: para.63-68; as seen in Fig.10 & Beard: Col.8, lines 40-42).
Regarding Claim 6, When in combination, Van Atta and Beard teach a method of claim 4, wherein a size or a shape of the base layer corresponds to a respective size or shape of the flat foot scan map (Beard: Col.2, line 66-Col.3, line 17 & Col.4, lines 11-27).
Regarding Claim 7, Beard further teaches a method of claim 4, wherein the flat foot scan map is derived from a three-dimensional rendering of a virtual shoe last comprising the standard deviation values for variations in foot contour (Col.2, line 66-Col.3, line 17 & Col.3, lines 50-58).
3. Claim(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Van Atta (US 2017/0164683) in view of Minami (US 2016/0095389).
Regarding Claim 9, Van Atta discloses the invention substantially as claimed above. Van Atta does not disclose wherein the padding element and the rigid cage are assembled such that the padding element is disposed between a textile layer of an upper of the article footwear and the rigid cage. However, Minami teaches a shoe having an element (1204) and a rigid cage (103) assembled such that the element is disposed between a textile layer (106) of an upper of the article footwear and the rigid cage (as seen in Fig.12).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the shoe upper of Van Atta to include a textile layer, as taught by Minami, in order to provide an interior layer that protects the padding element from wear-and-tear of a user’s foot being inserted and removed.
Regarding Claim 10, When in combination, Van Atta and Minami teach a method of claim 9, wherein the padding element and the rigid cage are assembled such that at least a portion of an interior surface of the rigid cage overlaps an exterior surface of the textile layer of the upper (Van Atta: as seen in Fig.9 & Minami: as seen in Fig.12).
4. Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Van Atta (US 2017/0164683) in view of Sterman (US 2017/0202309).
Regarding Claim 19, Van Atta further discloses a method of claim 1, wherein forming the padding element (150/410) comprises manufacturing the base layer (152) and the plurality of projections (162/420) as a single piece (as seen in Fig.5-6 & 10). Van Atta does not disclose the padding element formed by additively manufacturing. However, Sterman discloses using additive manufacturing to form a padding element (204; i.e. rubber and silicone are padding materials) in a single piece (para.50 & 53).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the manufacturing of Vanatta’s padding element for the additive manufacturing of Sterman, as a simple substitution of one well known type of manufacturing for another, in order to yield the predictable result of providing a padding element. Further, it is noted that Applicant has no criticality for the use of additive manufacturing versus integral molding.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For example, Krstic (US 7,089,690) teaches an upper with projections; Beye (US 2016/0037862) teaches an upper with projections.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGAN E LYNCH whose telephone number is (571)272-3267. The examiner can normally be reached Monday to Friday, 8:00am-4:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alissa J. Tompkins can be reached at 571-272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732
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