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 .
Response to Amendment
The preliminary amendments filed on February 27, 2026 have been considered and an action on the merits follows. As directed by the preliminary amendment, claims 1, 5, 10 and 11 have been amended and claim 12 is canceled. Accordingly, claims 1-11 are pending in this application, with an action on the merits to follow.
Information Disclosure Statement
The listing of references in the specification (see ¶ 0002) is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification (Disclosure)
The disclosure is objected to because of the following informalities:
the Specification has several instances of the phrase “TPU”, without ever first defining the acronym. Examiner suggests the instance in ¶ 0015 (i.e. the first instance of “TPU”) to recite “thermoplastic polyurethane (TPU)” to establish the meaning of the acronym.
¶ 0003 and 0005 are identical to one another. While this is not necessarily unacceptable, Examiner merely is bringing this to Applicant’s attention, just in case it was in error.
Appropriate correction is required.
Specification (Abstract)
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it contains the legal term “comprising” in line 1 (Examiner suggests reciting “including” instead of “comprising”). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 1, 6, 8 and 11 are objected to because of the following informalities:
Claim 1, line 1: “the shoe sole” should be added before “comprising”.
Claim 1, line 2: “a” should added before “forefoot”.
Claim 1, line 3: “a” should added before “hindfoot”.
Claim 1, line 8: “a” should added before “foot arch”.
Claim 6, line 2: “each graphene layer” should recite “each of the at least one graphene layer”.
Claim 8, line 1: “TPU” should recite “thermoplastic polyurethane (TPU)”.
Claim 11 is missing a period at the end of the claim.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
Claim 9 is 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.
Regarding claim 9, Applicant recites “said at least one hollow hole penetrates an upper surface of the propulsion plate and a lower surface thereof”, wherein the term “thereof” is indefinite. Correction is required. Examiner suggests “said at least one hollow hole penetrates an upper surface of the propulsion plate and a lower surface of the propulsion plate”, as best as can be understood.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lester et al. (hereinafter “Lester”) (US 2014/0259785).
Regarding independent claim 1, Lester discloses a shoe sole (#103) with a graphene propulsion plate (energy sole #300 for example; ¶ 0014 indicates that the energy soles may be formed of a composite, including graphene), [the shoe sole] comprising a sole body (see Fig. 3, for example); a part of the sole body corresponding to forefoot is defined as a front part of the sole body (see Fig. 3, which shows that the sole body has an arbitrary front part that corresponds to a forefoot; Examiner notes that the term "part" is very broad and merely means "a portion, division, piece, or segment of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)), and a part of the sole body corresponding to hindfoot is defined as a rear part of the sole body (see Fig. 3, which shows that the sole body has an arbitrary rear part that corresponds to a hindfoot); a propulsion plate (energy sole #300, for example, is a propulsion plate, inasmuch as the propulsion plate has been structurally defined in the claim) extending between the front part and the rear part of the sole body is embedded in the sole body (as shown in Fig. 3, energy sole #300 extends between the front and rear parts; ¶ 0055 discloses that the energy soles of the disclosure can be encompassed with spring foams (i.e. embedded therein) of the sole); the propulsion plate is a plate body containing graphene so as to form said graphene propulsion plate (¶ 0014 indicates that the energy soles may be formed of a composite, including graphene; the energy soles are plate bodies, inasmuch as the plate body has been structurally defined in the claim); the part of the sole body corresponding to the forefoot is a forefoot portion, the part of the sole body corresponding to the hindfoot is a hindfoot portion, and a part of the sole body corresponding to foot arch is a midfoot portion (see Fig. 3; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)); the propulsion plate is disposed corresponding to the midfoot portion, or corresponding to the midfoot portion and the forefoot portion, or corresponding to the midfoot portion and the hindfoot portion, or corresponding to the forefoot portion, the midfoot portion, and the hindfoot portion (see Fig. 3; energy sole #300 corresponds to all of the forefoot, midfoot and hindfoot portions).
Claim Rejections - 35 USC § 103
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, 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Head et al. (hereinafter “Head”) (US 2022/0273070) in view of Coleman (US 2018/0153255).
Regarding independent claim 1, Head discloses a shoe sole with a propulsion plate (sole #22; Figs. 1-4; support member #34 is a propulsion plate; ¶ 0031 describes how support member #34 enhances support and propulsion), [the shoe sole] comprising a sole body (see Fig. 4); a part of the sole body corresponding to forefoot is defined as a front part of the sole body (see Figs. 1-4, all of which show that the sole body has an arbitrary front part that corresponds to a forefoot; Examiner notes that the term "part" is very broad and merely means "a portion, division, piece, or segment of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)), and a part of the sole body corresponding to hindfoot is defined as a rear part of the sole body (see Figs. 1-4, all of which show that the sole body has an arbitrary rear part that corresponds to a hindfoot); a propulsion plate (support member #34) extending between the front part and the rear part of the sole body is embedded in the sole body (see Figs. 1-4; support member sits between midsole #24 and outsole #28, to be embedded therebetween); the propulsion plate is a plate body (see Figs. 2 and 5-8); the part of the sole body corresponding to the forefoot is a forefoot portion, the part of the sole body corresponding to the hindfoot is a hindfoot portion, and a part of the sole body corresponding to foot arch is a midfoot portion (see Figs. 1-4; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)); the propulsion plate is disposed corresponding to the midfoot portion, or corresponding to the midfoot portion and the forefoot portion, or corresponding to the midfoot portion and the hindfoot portion, or corresponding to the forefoot portion, the midfoot portion, and the hindfoot portion (see Figs. 1-4; support member #34 corresponds to all of the forefoot, midfoot and hindfoot portions). Head teaches that the plate can include carbon fiber, a composite material or any suitable material or combination of materials (¶ 0032 of Head), but does not specify that the composite material or combination of materials includes graphene.
Coleman teaches a shoe with a sole that has a plate made of a semi-rigid material, wherein the material can include a composite fiber-based material, including carbon or graphene fibers, wherein the plates can be comprised of different materials combined together (¶ 0050 of Coleman).
Head and Coleman teach analogous inventions in the field of shoe soles with composite-material plates. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have used a combination of carbon fiber and graphene, as taught by Coleman, as the material of choice for the support member #34 (i.e. propulsion plate) of Head in order to provide a known material that can assist with supporting the foot of the user of the shoe during use. As a result of the modification, the propulsion plate would further include graphene material to render it a graphene propulsion plate.
Regarding claim 10, the modified shoe sole of Head (i.e. Head in view of Coleman, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that the sole body also comprises a first midsole (midsole #24 is a “first midsole”) and a second midsole (outsole #28 is a “second midsole” inasmuch as Applicant has structurally defined the second midsole in the claim) laminated against each other (see Fig. 4 of Head); the propulsion plate is disposed between the first midsole and the second midsole (see Fig. 4 of Head).
Regarding claim 11, the modified shoe sole of Head (i.e. Head in view of Coleman, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that the sole body comprises a midsole (midsole #24) and an outsole (outsole #28) laminated on a lower surface of the midsole (see Fig. 4 of Head); the propulsion plate is disposed on an upper surface of the midsole or the lower surface of the midsole (support member #34 (i.e. plate) is on the lower surface of the midsole).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Head in view of Coleman as applied to claim 1 above, and further in view of Farina et al. (hereinafter “Farina”) (US 2017/0095033).
Regarding claim 2, the modified shoe sole of Head (i.e. Head in view of Coleman, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, but is silent as to what is the thickness of the support member #34 (i.e. plate) and it cannot be determined whether the plate has a thickness of 0.5-1.5 mm.
Farina teaches a shoe sole with a carbon fiber plate #300 (¶ 0086 of Farina) that has a thickness that can be substantially equal to 1.0 mm (¶ 0087 of Farina).
Modified Head and Farina teach analogous inventions in the field of carbon-based plates in footwear. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have formed the support member #34 (i.e. propulsion plate) to have been 1.0 mm, as taught by Farina, in order to provide a thickness that would keep the footwear sole at a lower profile and lower weight, and further since it 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(II)(A).
Claims 3 and 6-9 (claim 9 as best as can be understood) are rejected under 35 U.S.C. 103 as being unpatentable over Head in view of Coleman as applied to claim 1 above, and further in view of Shin et al. (hereinafter “Shin”) (US 2011/0123776), and as evidenced by NPL to Queen Mary of Phys.org (URL = https://phys.org/news/2019-09-graphene-d.html), regarding claims 6-9.
Regarding claim 3, the modified shoe sole of Head (i.e. Head in view of Coleman, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, but is silent as to whether the propulsion plate comprises a plurality of plies that are thermoset laminates; each of the plurality of plies being formed by a plurality of graphene fibers.
Shin teaches a graphene laminate that can be in the form of different numbers of layers of graphene, such as about 1 to about 10 layers of graphene (¶ 0041-0042 of Shin), wherein the graphene is bound to a substrate by a binder layer (Abstract of Shin). The binder layer may be a thermally curable resin or a hot-melt resin (¶ 0013-0017 of Shin).
Modified Head and Shin teach analogous inventions in the field of structures with graphene incorporated therein. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have applied the graphene into modified Head’s plate via a substrate and binder layer with a plurality of graphene layers (such as 10, as taught by Shin) in order to provide a material for the plate that would provide adequate support and rebound characteristics for the footwear sole. As a result of the modification, the propulsion plate would comprise a plurality of plies that are thermoset laminates (as noted above, about 10 graphene layers that are bound to a substrate via thermosetting materials); each of the plurality of plies being formed by a plurality of graphene fibers (as noted above).
Regarding claim 6, the modified shoe sole of Head (i.e. Head in view of Coleman, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, but is silent as to whether the propulsion plate comprises at least one graphene layer, a thickness of each graphene layer is not greater than 0.4 nm.
Shin teaches a graphene laminate that can be in the form of different numbers of layers of graphene, such as about 1 to about 10 layers of graphene (¶ 0041-0042 of Shin), wherein the graphene is bound to a substrate by a binder layer (Abstract of Shin). The binder layer may be a thermally curable resin or a hot-melt resin (¶ 0013-0017 of Shin). Shin teaches that the thickness of the binder layer can be as low as 0.01 nm (¶ 0018 of Shin).
Modified Head and Shin teach analogous inventions in the field of structures with graphene incorporated therein. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have applied the graphene into modified Head’s plate via a substrate and binder layer with one graphene layer, as taught by Shin, in order to provide a material for the plate that would provide adequate support and rebound characteristics for the footwear sole. As a result of the modification, the modified plate would have at least one graphene layer, wherein a thickness of the at least one graphene layer would be no greater than 0.4 nm (as evidenced by the NPL to “Queen Mary” of Phys.org, the thickness of graphene is 0.34 nm (see third paragraph on page 2 of NPL reference provided), which is not greater than 0.4 nm).
Regarding claim 7, the modified shoe sole of Head (i.e. Head in view of Coleman and Shin, as applied to claim 6 above) renders obvious all the limitations of claim 6, as set forth above, and further that the propulsion plate further comprises a substrate, said at least one graphene layer is laminated on the substrate (as taught by Shin, as noted above, and incorporated into modified Head, as explained above, the graphene is bound to a substrate by a binder layer (i.e. the binder layer, in this instance, constitutes the “substrate” for purposes of addressing the claim language).
Regarding claim 8, the modified shoe sole of Head (i.e. Head in view of Coleman and Shin, as applied to claim 7 above) renders obvious all the limitations of claim 7, as set forth above, and further that the substrate is a TPU plate, a nylon plate, an aramid plate, or a carbon fiber plate (the binder layer of Shin (which is incorporated into modified Head via the modification explained above) can be a thermoplastic, including a polyurethane or a polyamide/nylon (¶ 0016-0017 of Shin)).
Regarding claim 9, the modified shoe sole of Head (i.e. Head in view of Coleman and Shin, as applied to claim 8 above) renders obvious all the limitations of claim 8, as set forth above, and further that the propulsion plate is provided with at least one hollow hole (#60; Figs. 5, 6 of Head) for reducing weight of the propulsion plate (since the hole is void of material, the weight is reduced at least as compared to if there were no hole present), said at least one hollow hole penetrates an upper surface of the propulsion plate and a lower surface thereof (“through-hole”; ¶ 0030 of Head; see Figs. 5, 6 of Head).
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Head and Coleman as applied to claim 1 above, and further in view of Shin and Dyke et al. (hereinafter “Dyke”) (US 2015/0118142).
Regarding claim 4, the modified shoe sole of Head (i.e. Head in view of Coleman, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, but is silent as to whether the propulsion plate comprises a plurality of plies that are thermoset laminates; each of the plurality of plies being made from a plurality of graphene-reinforced fibers; the plurality of graphene-reinforced fibers are made from a carbon fiber precursor and graphene sheets being mixed, spun, and carbonized.
Shin teaches a graphene laminate that can be in the form of different numbers of layers of graphene, such as about 1 to about 10 layers of graphene (¶ 0041-0042 of Shin), wherein the graphene is bound to a substrate by a binder layer (Abstract of Shin). The binder layer may be a thermally curable resin or a hot-melt resin (¶ 0013-0017 of Shin).
Dyke teaches a concept of forming carbon nanotube/graphene hybrids from a process including mixing, spinning and carbonizing graphenes with carbon fiber as a precursor (¶ 0001 of Dyke).
Modified Head, Shin and Dyke teach analogous inventions in the field of materials including graphenes. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have applied the graphene into modified Head’s plate via a substrate and binder layer with a plurality of graphene layers (such as 10, as taught by Shin) in order to provide a material for the plate that would provide adequate support and rebound characteristics for the footwear sole, and it would have been further obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have accomplished the graphene-reinforced fibers via a carbon fiber precursor and graphene sheets being mixed, spin and carbonized, as taught by Dyke, in order to achieve the graphene sheet structures for completing the manufacture of the modified plate of Head by a known mechanism. Examiner notes that the limitation “the plurality of graphene-reinforced fibers are made from a carbon fiber precursor and graphene sheets being mixed, spun, and carbonized” is a product-by-process limitation. While the structure of the graphene-reinforced fibers may be formed by a different process, the end product is the same as that of Applicant’s claimed invention. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.
Regarding claim 5, the modified shoe sole of Head (i.e. Head in view of Coleman, Shin and Dyke, as such a modification is applied to address claim 4 above) renders obvious that the propulsion plate comprises a plurality of plies that are thermoset laminates (as taught by Shin and incorporated into modified Head, as explained above); each of the plurality of plies being made from a plurality of graphene-reinforced fibers; each of said plurality of graphene-reinforced fibers is formed by a carbon fiber and a graphene fiber blended with each other (as taught by Dyke and incorporated into modified Head, as explained above).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All art cited on the PTO-892 and not relied upon in an art rejection above is deemed relevant in the field of shoe soles with plates and/or graphene material therein.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMESON COLLIER whose telephone number is (571)270-5221. The examiner can normally be reached Monday - Friday 8 am - 5 pm.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JAMESON D COLLIER/ Primary Examiner, Art Unit 3732
Prosecution Insights