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 (Figs. 1-9) in the reply filed on July 27, 2026 is acknowledged.
Accordingly, claims 1-9 are pending in this application, with an action on the merits to follow regarding claims 1-9.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “pin holding structure” in claims 1 and 3.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 1, 3, and 7-9 (and claims 2 and 4-6 at least for depending from a rejected claim) 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is indefinite as it recites, “A sole which is part of a shoe, the sole comprising”. It is unclear whether the shoe is a required part of the claimed invention. Examiner respectfully suggests amending to recite, “A sole for a shoe, the sole comprising”.
Claim 3 is indefinite as it recites, “the plurality of base portions include a support base portion that supports at least a part of the lower wall portion.” First it is unclear if each of the plurality of base portions includes a support base portion or if the plurality of base portions collectively include a support base portion. Further, as only a plurality of lower wall portions was previously claimed, it is unclear if “the lower wall portion” is referring to a corresponding one of the plurality of lower wall portions, to all the lower wall portions, or to an additional lower wall portion. Examiner respectfully suggests amending to recite, “each of the plurality of base portions includes a support base portion that supports at least a part of a corresponding one of the plurality of [[the]] lower wall portions.”
Claim 7 is indefinite as it recites, “wherein the cushion layer includes a three-dimensional structure comprising a plurality of unit structure bodies that are adjacent to each other, each of the plurality of unit structure bodies includes the upper wall portion, the lower wall portion, and the rising wall portion, and the upper wall portion, the lower wall portion, and the rising wall portion configure a three-dimensional shape that defines the receiving space.” As only a plurality of the wall portions was previously claimed, it is unclear if “the lower/upper/rising wall portion” is referring to a corresponding one of the plurality of lower/upper/rising wall portions, to all the lower/upper/rising wall portions, or to an additional lower lower/upper/rising portion. Further it is unclear if the lower wall portion, the upper wall portion, and the rising wall portion each configure a three-dimensional shape or if they combine to form a three-dimensional shape such that each of the until structure bodies forms a three-dimensional shape.
Claim 8 is indefinite as it recites, “wherein the three-dimensional structure has a shape that opens the receiving space in a foot width direction of the sole.” It is unclear if “a shape” is referring to the previously claimed “three-dimensional shape” or to a different shape. Further, it is unclear what is meant by “opens” the receiving space as it could mean forms the receiving space, makes the receiving space bigger when the compressive load is applied, exposes the receiving space along a side of the footwear, or otherwise.
Claim 9 is indefinite as it recites, “A shoe comprising: the sole according to claim 1; and an upper provided above the sole.” It is unclear if “a shoe” is referring to the same shoe recited in claim 1 and further makes it unclear whether the shoe is a required structure of claim 1.
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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto (US 2023/0225452) in view of Misevich (US 4561197).
Regarding claim 1, Sakamoto discloses a sole (110A, shown in Figs. 15-18) which is a part of a shoe (100), the sole comprising: a cushion layer (1/1A) that is elastically deformable (see paras. 0062 and 0074); a bottom plate (112/22) below the cushion layer (as shown in Figs. 15-16); a top plate (113/21) above the cushion layer (as shown in Figs. 16 and 18); wherein the bottom plate has a plate body (the body of the front 112/22 in Fig. 18), the cushion layer has a first region, and a second region on the plate body (see annotated Fig. 3A) , and the second region includes a receiving space (see annotated Fig. 3A) configured to receive a part of the first region when a compressive load in an up-down direction acts on the cushion layer (as can be seen in Fig. 3B, see paras. 0071-0072).
Sakamoto does not expressly disclose at least one pin holding member that holds a spike pin, wherein the bottom plate has a plate body, and at least one base portion that holds the at least one pin holding member, the at least one base portion has an upper surface at a position raised from an upper surface of the plate body, the first region of the cushion layer on the at least one base portion.
Misevich teaches a cleated structure for a sole (22) comprising a bottom plate (24) comprising at least one pin holding member (32) that holds a spike pin (30) (Examiner notes “pin holding member” has been interpreted under 35 USC 112(f) and as 32 is a “spike receptacle” that holds the spike 30, see Fig. 3, it is considered at least a functional equivalent to the pin holding member 500 in Fig. 4 of the instant application), wherein the bottom plate has a plate body (3a exclusive of 46), and at least one base portion (46) that holds the at least one pin holding member (see Figs. 3), the at least one base portion has an upper surface (48) at a position raised from an upper surface of the plate body (as can be seen in Fig. 3).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add a base portion and pin holding member to the bottom plate of Sakamoto, as taught by Misevich, in order to add/alter the ground interaction characteristics so that the shoe may be used to improve performance in various sports.
When used in combination, as there are a number of base portions with pin holding members (see Figs. 2 of Misevich) as well as a number of first regions of the cushion layer (see Fig. 1A of Sakamoto), at least one of the first regions would be on one of the base portions.
Regarding claim 2, the modified sole of Sakamoto discloses wherein the cushion layer (1/1A) has a plurality of lower wall portions (12’, see Figs. 1B and 3A), a plurality of upper wall portions (11, see Figs. 1B and 3A) above the plurality of lower wall portions (as can be seen in Figs. 1B and 3A), and a plurality of rising wall portions (10/13) each coupling a corresponding one of the lower wall portions and a corresponding one of the upper wall portions (as can be seen in Fig. 3A), and the second region includes a pair of the rising wall portions adjacent to each other, and the receiving space is between the pair of the rising wall portions (as can be seen in annotated Fig. 3A).
Regarding claim 3, the modified sole of Sakamoto discloses wherein the at least one pin holding member (32 of Misevich) includes a plurality of pin holding members (as seen in Figs. 2-3 of Misevich), the at least one base portion (46 of Misevich) includes a plurality of base portions (as seen in Figs. 2-3 of Misevich), and the plurality of base portions include a support base portion (47 of Misevich) that supports at least a part of the lower wall portion (as there are a number of base portions with pin holding members as well as a lower wall portions of the cushion layer, at least one of the support base portions would support at least a portion of the lower wall portion). Further Examiner notes that such an alignment would be depending on the size of the units (U of Sakamoto) of the cushioning layer and it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the size of the units of the cushioning layer of the modified sole of Sakamoto in order to provide optimal cushioning for a particular individual for a particular activity as an individual’s body weight, body shape, running style, and ground surface condition can affect the strain on the cushion member, see para. 0087), since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04.
Regarding claim 4, the modified sole of Sakamoto discloses wherein the plurality of lower wall portions include at least one intermediate lower wall portion between a pair of the base portions adjacent to each other (see annotated Fig. 4 and when the pin holding members are added, such an intermediate lower wall portion would be between a pair of base portions).
Regarding claim 5, the modified sole of Sakamoto discloses wherein the at least one intermediate lower wall portion is in contact with the plate body (as can be seen in annotated Fig. 3A).
Regarding claim 6, the modified sole of Sakamoto discloses all the limitations of claims 1-2 above, but does not expressly disclose wherein a length between the pair of the rising wall portions is 0.5 mm or more. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the distance between adjacent rising walls of the modified sole of Sakamoto to be .5 mm or more to prevent the rising wall portions from acting more like a partition leading to compressive stiffness and less cushioning, and since has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05.
Regarding claim 7, the modified sole of Sakamoto discloses wherein the cushion layer includes a three-dimensional structure (see Fig. 1A) comprising a plurality of unit structure bodies (U) that are adjacent to each other (see Fig. 1A and para. 0054), each of the plurality of unit structure bodies includes the upper wall portion, the lower wall portion, and the rising wall portion, and the upper wall portion, the lower wall portion, and the rising wall portion configure a three-dimensional shape that defines the receiving space (see Figs. 1A-1B and annotated Fig. 3A, and paras. 0057-0058).
Regarding claim 8, the modified sole of Sakamoto discloses wherein the three-dimensional structure (as shown in Fig. 1) has a shape that opens the receiving space in a foot width direction of the sole (as each unit is hollow and reversible, the receiving space extends in both the length and width directions of the sole, and when compressed as shown in Fig. 3B, the rising walls would make every other receiving space larger).
Regarding claim 9, the modified sole of Sakamoto discloses a shoe (100) comprising: the sole according to claim 1 (see Fig. 15 and claim 1 above); and an upper (120) provided above the sole (see Fig. 15).
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Annotated Fig. 3A (Sakamoto)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For example, Giordani (US 2018/0125145) shows ground traction protrusions aligned relative to receiving spaces, Otake (US 2025/0241404) teaches similar structure as the present application, and Lucas (US 2011/0138652) teaches cushioning structures with compressible units.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HEATHER MANGINE, Ph.D. whose telephone number is (571)270-0673. The examiner can normally be reached Monday-Friday 8AM-4PM.
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, 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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/HEATHER MANGINE, Ph.D./Primary Examiner, Art Unit 3732
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