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 .
Pro Se Filing
It appears the inventor(s) filed the current application pro se (i.e., without the benefit of representation by a registered patent practitioner). While inventors named as applicants in a patent application may prosecute the application pro se, lack of familiarity with patent examination practice and procedure may result in missed opportunities in obtaining optimal protection for the invention disclosed. The inventor(s) may wish to secure the services of a registered patent practitioner to prosecute the application, because the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting a patent practitioner.
A listing of registered patent practitioners is available at https://oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent practitioners located in their area by writing to Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
Response to Amendment
In accordance with Applicant’s amendment filed 5/6/2025, all of the previously pending claims 9-12 are canceled. Claims 13-14 are new. Claims 13-14 are pending and presented for examination on the merits.
Response to Arguments
Applicant should submit an argument under the heading “Remarks” pointing out disagreements with the examiner’s contentions. Applicant must also discuss the references applied against the claims, explaining how the claims avoid the references or distinguish from them. The Remarks submitted on 5/6/2025 and 12/24/2024 appear to only be directed to describing the amendments that Applicant has made, not the references applied against the claims. Applicant does not explain how the claims avoid the references or distinguish from them or point out any alleged disagreements that Applicant may have with the Examiner’s contentions.
Applicant's arguments filed 5/6/2025 and 12/24/2024 have therefore been fully considered but they are not persuasive.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
Priority
In light of the Petition to Restore Priority being granted as of 5/19/2025, the Hartveld WO 2020/217041 reference will no longer be used as prior art.
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in the United Kingdom on 4/21/2020. It is noted, however, that applicant has not filed a certified copy of the PCT/GB2020/000047 application as required by 37 CFR 1.55.
See MPEP 215 which explains the requirement to file a certified copy of the foreign application, which reads in part: “The certified copy which must be filed is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate of the foreign patent office giving certain information. Certified copies include those retrieved by the Office in accordance with a priority document exchange program. See MPEP § 215.01. A copy of the certified copy filed by applicant, including a copy filed via the USPTO patent electronic filing system, will not satisfy the requirement in 37 CFR 1.55(g) for a certified copy.”
Information Disclosure Statement
The information disclosure statements filed 12/19/2024 fail to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein that has been struck-through (see annotated IDS documents provided with this Office action) has not been considered.
Additionally, there are several documents listed which have incorrect document numbers. These documents have not been considered and have been struck-through (see annotated IDS documents provided with this Office action). Examiner respectfully suggests that Applicant review the annotated IDS documents provided with this Office Action, in particular the documents that are struck-through (not considered), and review those document numbers for accuracy. All document numbers (e.g., US Patent or US Patent Application Publication numbers) should be typed exactly as written in the header of the document, including all zeros.
Any documents that have not been struck-through in the annotated IDS documents provided with this Office action have been considered by the Examiner.
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(s) 13-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakatsuka (US 2019/0159547).
Regarding claim 13, Nakatsuka discloses: A shoe sole with a sole arrangement that includes: a plate member (hard plate 2 “by forming the sectional shape in the width direction into the corrugated shape, a weight of the hard plate 2 can be reduced, and a strength (a bending strength) of the hard plate 2 in the length direction can be improved”, paragraph 28), situated on top of and attached to a compressible midsole (cushion materials 3, see figure 1 showing the plate 2 is on top of the cushion materials 3; “cushion materials 3 are respectively attached to both end parts, i.e., the front foot part and the heel part, of a ground contact side (the bottom side) of the hard plate 2” paragraph 30), is provided between the compressible midsole and an upper part (shoe body 1, see figure 1), wherein the improvement comprises: the plate member containing a single hollow groove (one recessed stripe 2b, “the projecting stripes 2a shown in FIG. 2 form the recessed strips 2b, and the recessed strips 2b in a bottom surface of the hard plate 2 form the projecting strips 2a, so that a sectional shape of the hard plate 1 is formed into a corrugated shape” paragraph 28), running from directly underneath a distal part of the calcaneus and a navicular bone to directly underneath metatarsal bones of a wearer when worn (see figure 2 showing that the projecting stripes 2a and recessed stripes 2b extend along the entire length of the hard plate 2), and the plate member containing cupping situated around at rear of the plate, around a calcaneus when worn (see figure 2, noting that it is a view of the underside of the plate as described in paragraph 28, showing how the ends of the hard plate 2 curve to form a “cupping” insofar as Applicant has shown or described).
Regarding claim 14, Nakatsuka discloses: The shoe sole with the sole arrangement according to claim 13, wherein the improvement further comprises: a recess into the midsole (see figure 1 annotated below) between the plate member and the ground directly below the cuboid bone, navicular bone, cuneiform and the proximal parts of the 1st, 2nd, 3th and 4th metatarsal bones when worn (see figure 1 annotated below) and no outer sole piece in the area between the plate member and the ground directly below the cuboid bone, navicular bone, cuneiform and the proximal parts of the 1st, 2nd, 3rd and 4th metatarsal bones, when worn (no outer sole is described in Nakatsuka, so there is no outer sole in the claimed area).
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Figure 1 of Nakatsuka (left) compared to figure 1 of the instant application (right) showing the location of the recess in the midsole
Conclusion
THIS ACTION IS MADE FINAL. 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.
This action is a final rejection and closes the prosecution of this application. Applicant’s reply under 37 CFR 1.113 to this action is limited to an appeal to the Patent Trial and Appeal Board, an amendment complying with the requirements set forth below, or a request for continued examination (RCE) to reopen prosecution where permitted. Please note that the Office also offers initiatives that are available to applicants after the close of prosecution. See https://www.uspto.gov/patents/initiatives/uspto-patent-applications-iniatives-timeline for more information.
General information on the Patent Trial and Appeal Board is available at: www.uspto.gov/patents/ptab. The information at this page includes guidance on time limited options that may assist the applicant contemplating appealing an examiner’s rejection. It also includes information on pro bono (free) legal services and advice available for those who are under-resourced and considering an appeal at: https://www.uspto.gov/patents/ptab/free-legal-assistance. The page is best reviewed promptly after applicant has received a final rejection or the claims have been twice rejected because some of the noted assistance must be requested within one month from the date of the latest rejection. See MPEP § 1204 for more information on filing a notice of appeal.
If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply. The Notice of Appeal must be accompanied by the fee required by 37 CFR 41.20(b)(1). The current fee amount is available at: www.uspto.gov/Fees.
If applicant should desire to file an after-final amendment, entry of the proposed amendment cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made in a previous Office action. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing of good and sufficient reasons why they are necessary and why they were not presented earlier.
A reply under 37 CFR 1.113 to a final rejection must include cancellation of or appeal from the rejection of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds all of the claims to be in condition for allowance.
If applicant should desire to continue prosecution in a utility or plant application filed on or after May 29, 2000 and have the finality of this Office action withdrawn, an RCE under 37 CFR 1.114 may be filed within the period for reply. See MPEP § 706.07(h) for more information on the requirements for filing an RCE.
The application will become abandoned unless a Notice of Appeal, an after final reply that places the application in condition for allowance, or an RCE has been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIANNA T DUCKWORTH whose telephone number is (571)272-1458. The examiner can normally be reached M-F 9:00 am - 5:00 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.
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/BRIANNA T. DUCKWORTH/ Examiner, Art Unit 3732
/PATRICK J. LYNCH/ Primary Examiner, Art Unit 3732