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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on October 7, 2025 has been entered.
Drawings
1. The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “the anterior edge of the toe ball support part is configured to extend on the line passing a center of the second proximal phalanx in the forward-and-backward direction and a center of a third proximal phalanx in the forward-and-backward direction” in Claim 12 and “the rear parts of the first to fourth metatarsal bones being at a rear side of centers of the respective first to fourth metatarsal bones in the forward-and-backward direction” Claim 13 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
2. Claims 12 and 13 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 12 recites “wherein the anterior edge of the toe ball support part (of Dalton) is configured to extend on the line passing a center of the second proximal phalanx in the forward-and-backward direction and a center of a third proximal phalanx in the forward-and-backward direction”. The claim limitation is indefinite as it is highly unclear what Applicant means by “in the forward-and-backward direction”. Claim 12 is rejected as best understood by examiner.
Claim 13 “the rear parts of the first to fourth metatarsal bones being at a rear side of centers of the respective first to fourth metatarsal bones in the forward-and-backward direction”. The claim limitation is indefinite as it is highly unclear what Applicant means by “in the forward-and-backward direction”. Claim 13 is rejected as best understood by examiner.
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.
3. Claim(s) 1 and 4-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi (US 2016/0095382) in view of Dalton (US 2004/0118017), and in further view of Lan (US 2018/0042335).
Regarding Claim 1, Takahashi discloses a shoe insole (1) comprising: an insole body (layer seen at 70) including an upper surface (i.e. upper surface of layer at 70) and a lower surface (i.e. lower surface of layer at 70), the upper surface being arranged so as to be in contact with a sole of a foot of a user (as seen in Fig.5), the lower surface being arranged at an opposite side of the upper surface and so as to be in contact with an inner sole of a shoe (para.29); a calcaneal anterior-part support protrusion (90) that is configured to be provided in a region corresponding to a calcaneal tubercle (12A) of the foot having a calcaneus (12)(para.36), the calcaneus having a calcaneal front-side upper end and a calcaneal rear part (as seen in Fig.2 & 5), the calcaneal front-side upper end acting as a point of effort, the calcaneal rear part acting as a fulcrum, a moment around the fulcrum is exerted on the calcaneus, the calcaneal tubercle being directly below the point of effort, and that is configured to abut the calcaneal tubercle in order to maintain an inner longitudinal arch, an outer longitudinal arch, and a transverse arch of a foot (para.68-69; as seen in Fig.2 & 5); with the calcaneal anterior-part support protrusion maintaining the inner longitudinal arch, the outer longitudinal arch, and the transverse arch (para.35, 41-46 & 52-53), wherein on the upper surface of the insole body, the calcaneal anterior-part support protrusion (90) includes a region corresponding to the calcaneal tubercle at a position at which a long plantar ligament overlaps (para.57 & 63-65), the calcaneal anterior-part support protrusion is downwardly inclined along a forward-and-backward direction from a region corresponding to the calcaneal tubercle so as to be gradually decreased in thickness, the calcaneal anterior-part support protrusion supporting the long plantar ligament at a position at which the calcaneal tubercle overlaps (as seen in Fig.2 & 5). Takahashi does not disclose a toe ball support part that is formed on the lower surface of the insole body whereby a gap is generated between a close part of the toe ball support part and an inner sole of a shoe and that supports a first metatarsal bone head part and a fifth metatarsal bone head part of the foot, an anterior edge of the toe ball support part is configured to extend on a line connecting from a first proximal phalanx to a fifth proximal phalanx of the foot; and the toe ball support part includes a thenar part that is configured to support the first metatarsal bone head part, and an other-toe ball part that is configured to support a second metatarsal bone head part of the foot to the fifth metatarsal bone head part, the insole body is formed to continue between the first proximal phalanx and the second proximal phalanx.
However, Dalton teaches an insole having a toe ball support part (38) that is formed on a lower surface of the insole body (22), whereby a gap (i.e. grooves around 38) is generated between a close part of the toe ball support part and an inner sole of a shoe and that supports a first metatarsal bone head part (100A) and a fifth metatarsal (100E) bone head part of the foot (as seen in Fig.5 & 9), an anterior edge (i.e. front edge of 38) of the toe ball support part is configured to extend on a line connecting from a first proximal phalanx to a fifth proximal phalanx of the foot (as seen in Fig.9; para. 28, each of 100A-100E are supported); and the toe ball support part includes a thenar part (38 under the big toe) that is configured to support the first metatarsal bone head part (100A), and an other-toe ball part (i.e. 38 under 100B-100E) that is configured to support a second metatarsal bone head part of the foot to the fifth metatarsal bone head part (as seen in Fig.9), the insole body is formed to continue between the first proximal phalanx and the second proximal phalanx (as seen in Fig.9), and the toe ball support part bulges downward from the lower surface of the insole body (as seen in Fig.5).
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 insole of Takahashi to have a toe ball support part, as taught by Dalton, in order to provide an insole with enhanced support to the user’s foot in the toe region for a more comfortable foot strike. When in combination, Takahashi and Dalton teach an insole front part that is thinner than the toe ball support part is provided in front of the toe ball support part (Takahashi: Fig.5 & Dalton: Fig. 5), the upper surface and the lower surface (of Takahashi) of the insole body are flat from the insole front part to the toe ball support part (when modified with Dalton), and the toe ball support part bulges downward from the lower surface of the insole body (Dalton: Fig.5), even when a weight of the user is applied to the shoe insole, the toe ball support part is configured to bulge downward from the lower surface of the insole body to maintain the gap (i.e. 38 of Dalton placed on the flat lower surface of Takahashi would bulge downward), and is configured to have a height with respect to the inner sole of the shoe such that the toe ball support part holds the first metatarsal bone head part and the fifth metatarsal bone head part at a predetermined position with respect to the inner sole of the shoe (as evidenced by Fig.9 of Dalton), with the calcaneal anterior-part support protrusion maintaining the inner longitudinal arch, the outer longitudinal arch, and the transverse arch (Takahashi: as seen in Fig.1 & 5; para.65).
Takahashi and Dalton disclose the invention substantially as claimed above. Takahashi and Dalton do not disclose the toe ball support part with a V-shaped recess in which the anterior edge between the first proximal phalanx and a second proximal phalanx is recessed backward in a V-shape in a plan view, the V-shaped recess is formed such that the anterior edge between the first proximal phalanx and the second proximal phalanx is located more rearward than the anterior edge of a region corresponding to the first proximal phalanx and than the anterior edge of a region corresponding to the second proximal phalanx to the fifth proximal phalanx.
However, Lan teaches a toe ball support part (10) with a V-shaped recess (15) in which an anterior edge (i.e. front edge of 10) between the first proximal phalanx and a second proximal phalanx is recessed backward in a V-shape in a plan view (as seen in Fig.2 & 3), the V-shaped recess is formed such that the anterior edge between the first proximal phalanx and the second proximal phalanx is located more rearward than the anterior edge of a region corresponding to the first proximal phalanx and than the anterior edge of a region corresponding to the second proximal phalanx to the fifth proximal phalanx (as seen in Fig.2 & 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 have modified the toe ball support part of modified Takahashi to have a V-shape recess between the first proximal phalanx and a second proximal phalanx, as taught by Lan, in order to provide a toe ball support part with enhanced flexibility and articulation of a user’s big toe. When in combination, Takahashi, Dalton, and Lan teach on a traverse cross section that crosses the V-shaped recess in a left-and-right direction, a space is provided by the V-shaped recess (as modified by Lan) below the insole body such that the shoe insole (of Takahashi) includes a portion which is between the first proximal phalanx and the second proximal phalanx and which is thinner than the toe ball support part (as seen in Fig.2 & 3A of Takahashi, Fig.2 of Dalton, and Fig.2 & 3 of Lan).
Regarding Claim 4, Dalton further teaches a shoe insole according to claim 1, wherein a trailing edge (i.e. rear edge of 38) of the toe ball support part has a central portion in a width direction recessed forward (as seen in Fig.2).
Regarding Claim 5, Dalton further teaches a shoe insole according to claim 1, wherein a thickness of an outer peripheral part of the toe ball support part gradually decreases (para.24, as seen in Fig.5 & 6; 38 decreases in thickness from the center to the peripheral edge).
Regarding Claim 6, Takahashi discloses a shoe insole according to claim 1, wherein on the upper surface of the insole body, a cuboid bone support protrusion (80) is arranged so as to overlap the calcaneal anterior-part support protrusion (90), and the cuboid bone support protrusion including an area from a region corresponding to a cuboid bone (18) of the foot to a region corresponding to a navicular bone of the foot is downwardly inclined toward both left and right side edges to gradually decrease a thickness, and downwardly inclined from the region corresponding to the cuboid bone in a forward-and-backward direction to gradually decrease the thickness, so that the thickness in front-back and left-right radial directions gradually decreases (as seen in Fig.1 & 5; para.42-43).
Regarding Claim 7, Takahashi discloses a shoe insole according to claim 6, wherein the cuboid bone support protrusion (80) has a maximum height to support the cuboid bone (18) of the foot (para.42-43), and the calcaneal anterior-part support protrusion (90) has a maximum height that is higher than the maximum height of the cuboid bone support protrusion and that is to support the long plantar ligament (para.44)(as seen in Fig.4B-5).
Regarding Claim 8, When in combination, Takahashi and Dalton teach a shoe insole according to claim 1, wherein the insole front part of the lower surface is defined as a portion from a toe of the insole body to the anterior edge of the toe ball support part in the forward-and-backward direction (Takahashi: Fig.5 & Dalton: Fig.2).
Regarding Claim 9, When in combination, Takahashi, Dalton, and Lan teach a shoe insole according to claim 8, wherein a tip of the V-shaped recess (of Lan) points a heel of the insole body (of Takahashi) in the forward-and-backward direction (as evidenced by Fig.2 & 3 of Lan).
Regarding Claim 10, When in combination, Takahashi, Dalton, and Lan teach a shoe insole according to claim 8, wherein the space (i.e. space formed between the insole and shoe sole due to the V-shaped recess) between the first proximal phalanx and the second proximal phalanx is continuous to the gap (i.e. gap formed between the insole and shoe sole due to the downward bulging height of the toe ball part)(as seen in Fig.2 & 3A of Takahashi, Fig.2 & 5 of Dalton, and Fig.2 & 3 of Lan).
Regarding Claim 11, When in combination, Takahashi, Dalton, and Lan teach a shoe insole according to claim 9, wherein the insole body includes left and right side edges (Takahashi: i.e. left & right 76), portions of the anterior edge of the toe ball support part curve so as to protrude to a front side (Dalton: as seen in Fig.2), the portions of the anterior edge of the toe ball support part extend from the tip of the V-shaped recess to respective left and right side edges (as evidenced by Fig.5 of Dalton).
Regarding Claim 12, insofar as is definite, When in combination, Takahashi, Dalton, and Lan teach a shoe insole according to claim 1, wherein the anterior edge of the toe ball support part (of Dalton) is configured to extend on the line passing a center of the second proximal phalanx in the forward-and-backward direction and a center of a third proximal phalanx in the forward-and-backward direction (Dalton: as seen in Fig.9; para.28 & Lan: Fig.3).
Regarding Claim 13, insofar as is definite, When in combination, Takahashi, Dalton, and Lan teach a shoe insole according to claim 1, wherein a trailing edge of the toe ball support part (of Dalton) is configured to extend on a line passing rear parts of the first to fourth metatarsal bones, the rear parts of the first to fourth metatarsal bones being at a rear side of centers of the respective first to fourth metatarsal bones in the forward-and-backward direction (Dalton: as seen in Fig.9; para.28 & Lan: Fig.3; inasmuch as has been claimed by Applicant, the rear edge of 38 is positioned at a rear of the metatarsal bones and rear of a center of the metatarsal bone heads).
Response to Arguments
In view of Applicant's amendment, the search has been updated, and newly modified grounds of rejection have been identified and applied. Applicant's arguments have been considered but, as they are drawn solely to the newly amended limitations, are moot in view of the newly modified ground(s) of rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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, 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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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732