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
Response to Amendment
Applicant’s amendment filed April 27, 2026 has been received, Claims 1, 4-11, and 14 are currently pending.
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.
1. Claim(s) 1, 4-11, and 14 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 the inner sole of the 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 14 When in combination, Takahashi, Dalton, and Lan teach shoe insole according to claim 1, wherein the insole body includes a flat surface (as seen in Fig.5 of Takahashi) configured to contact the sole of the foot at a region corresponding to the toe ball support part (as seen in Fig.1 & 5 of Dalton), and the toe ball support part is configured to maintain the flat surface of the insole body at elevated position by contacting the inner sole of the shoe so that the gap is maintained even when the weight of the user is applied to the shoe insole (as seen in Fig.1 & 5 of Dalton).
Response to Arguments
Applicant's arguments filed April 27, 2026 have been fully considered but they are not persuasive.
2. Applicant’s Remarks: Applicant asserts that pad 38 of Dalton is fitted into a recess formed in the bottom surface of the insole, and its lower surface is flush with the lower surface of the insole. Thus, the pad 38 does not protrude downward from the insole as required by the present invention.
Examiner’s Response: Examiner respectfully disagrees. Applicant’s argument is not found persuasive as 38 of Dalton can be seen in Fig.5 clearly protruding further downward than the bottom surface of 22 surrounding 38. Therefore, Dalton’s 38 meets the limitations of the current claim. Further, when in combination, 38 of Dalton is placed on the flat bottom surface of Takahashi, which would have 38 protruding downward.
3. Applicant’s Remarks: Applicant asserts Lan teaches a structure that reduces toe mobility, which is contrary to the present invention. Furthermore, the recess 15 of Lan is merely described as corresponding to the position of the big toe joint (see paragraph [0019] of Lan), and it is unclear from Figs. 2 and 3 whether the recess is located specifically between the first proximal phalanx and the second proximal phalanx, as recited in Claim 1. Accordingly, the front cushion pad 10 and the recess 15 of Lan cannot be regarded as corresponding to the toe ball support part and the V-shaped recess of the present invention.
Examiner’s Response: Examiner respectfully disagrees. In response to applicant's argument that Lan teaches a structure that reduces toe mobility, which is contrary to the present invention, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Applicant’s argument that it is unclear from Figs. 2 and 3 of Lan whether the recess is located specifically between the first proximal phalanx and the second proximal phalanx is not found persuasive as Lan clearly states that recess 15 corresponds to the position of the big toe joint and shows such in Fig.4. Since 15 of Lan corresponds to the big toe joint then it would be located between the first proximal phalanx (i.e. big toe) and the second proximal phalanx (i.e. second toe). This is further evidenced by Lan’s admission in para.20 that 11 supports the metatarsals while 12 supports the joints of the toes. For these reasons, Applicant’s arguments are not found persuasive.
4. Applicant’s Remarks: Applicant asserts there is no motivation to combine Lan with Takahashi and Dalton. Lan is directed to preventing forward slipping of the foot in high-heeled shoes by restricting toe movement, whereas the present invention is directed to increasing toe mobility by providing a gap beneath the toes. Because Lan intentionally restricts toe movement by means of the stop portion that is a part of the front cushion pad 10, incorporating its structure into Takahashi would be contrary to the objective of the present invention and would change the principle of operation of the combined device. Accordingly, a person skilled in the art would not have been motivated to combine Lan with Takahashi and Dalton. Indeed, Lan teaches away from increasing toe mobility by providing a stop portion that restricts toe movement, which is inconsistent with the objective of the present invention.
Examiner’s Response: Examiner respectfully disagrees. In response to applicant's argument that Lan teaches a structure that reduces toe mobility, which is contrary to the present invention, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Additionally, Lan does not teach away from functional limitations which are not claimed and which Lan would be capable of providing, even if claimed, given that Lan teaches the claimed structure which be capable of providing the desired function. For these reasons, Applicant’s arguments are not found persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732
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