Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Response to Amendment
Applicant’s amendment filed September 22, 2025 has been received, Claim 1 is currently pending.
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 “a two thirds portion of the ball of the foot is positioned to hover over the empty cutout” and “a one third portion of the ball of the foot closest to the toes receives unalleviated pressure from the ridge via contact therewith” in Claim 1 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.
Specification
2. The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Claim 1 recites “a two thirds portion of the ball of the foot is positioned to hover over the empty cutout” and “a one third portion of the ball of the foot closest to the toes receives unalleviated pressure from the ridge via contact therewith”. After a full review of Applicant’s disclosure there appears to be no support for where the two thirds of the ball of the foot are located with regard to the sole nor is there any description of such portions of the foot hovering over the cutout. Also, there is no support for a one third portion of the ball of the foot closest to the toes receives unalleviated pressure from the ridge via contact; as Applicant’s disclosure in Para.45 discusses the one third portion being positioned on the drop off, not the ridge. Therefore, the specification fails to provide proper antecedent basis for the claimed subject matter.
Claim Objections
3. Claim 1 is objected to because of the following informalities: Claim 1 recites “an drop-off” which appears to be an error and should read “a drop-off”; “an empty cutout said sole” which appears to be an error and should read “an empty cutout of said sole”; “a two thirds portion of the ball of the foot” which appears to be an error and should read “two thirds of a portion of the ball of the foot”; and “a one third portion of the ball of the foot” which appears to be an error and should read “one third of a portion of the ball of the foot”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
4. Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 recites “a two thirds portion of the ball of the foot is positioned to hover over the empty cutout”. After a full review of Applicant’s disclosure there appears to be no support for where the two thirds of the ball of the foot are located with regard to the sole nor is there any description of such portions of the foot hovering over the cutout. The only mention of the ball of the foot being divided into thirds is in para.42 of Applicant's specification and there is no further description detailing where the middle and bottom thirds are located with relation to the sole; the Figures also fail to show such a relationship with the sole. Additionally, there are no anatomical boundaries provided in the original disclosure to give a clear understanding of what Applicant means by the claimed upper third, middle third, and bottom third of the ball of the foot, this is further unclear as “the ball of the foot” has no recognized definition detailing its anatomical boundaries; i.e. the area called “the ball of the foot” is an informal term which can refer to various portions of an area of the foot. There is no description of such portions of the foot hovering over the cutout. Also, there is no support for a one third portion of the ball of the foot closest to the toes receives unalleviated pressure from the ridge via contact; as Applicant’s disclosure in Para.45 discusses the one third portion being positioned on the drop off, not the ridge. Therefore, the claim limitation is regarded as new matter.
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.
5. Claim 1 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.
Claim 1 recites “placing a portion of the foot over an abrupt drop-off and the ridge of a sole on the inside of footwear;…and, raising the heel of the foot so that a two thirds portion of the ball of the foot is positioned to hover over the empty cutout, a one third portion of the ball of the foot closest to the toes receives unalleviated pressure from the ridge via contact therewith, and at least a portion of the pads of the toes are positioned on the ridge”. The claim limitation is indefinite as it is entirely unclear how two thirds portion of the ball of the foot would hover over the cutout. If the heel of the foot is raised then the pressure point would be on the ball of a user’s foot, which would push down into the cutout and not hover. Additionally, with the heel raised, if the one third portion of the ball of the foot closest to the toes is positioned on the ridge then the other two thirds portion of the ball would take the pressure of a user’s weight and slope down the drop off and not hover over the cutout. Claim 1 is rejected as best understood by Examiner.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
6. Claim(s) 1 is/are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Donato (US 2012/0096745).
Regarding Claim 1, Donato discloses a method for improving bipedal motion (para.21) where the heel of a foot is raised while the toes of the foot are in mechanical contact with a ridge (144) on the inside of footwear (i.e. while walking in a shoe the foot may be flexed such that the heel of the sole is lifted off the ground while the sole having toes of the foot stays in contact with the a ridge), said method comprising the steps of: placing a portion of the foot over an drop-off (142) and the ridge (144) of a sole on the inside of footwear (100); wherein the drop-off and ridge define a border of an empty cutout (140) said sole and, raising the heel of the foot so that a two thirds portion of the ball of the foot is positioned to hover over the empty cutout (Pg.2, Claim 1; as seen in Fig.2 & 5a, insofar as is definite the rear two thirds of 4 are positioned to hover over the empty cutout), a one third portion (para.8; as seen in Fig.2, the third of 4 nearest the toes is resting on 142) of the ball of the foot closest to the toes receives unalleviated pressure from the ridge via contact therewith, and at least a portion of the pads of the toes are positioned on the ridge (as seen in Fig.2 & 5a; para.21 & 25). Further, it is noted that the sole will fit differently sized feet in different manners and an intended relative position of the sole to the wearer's foot anatomy is functional and not patentably significant.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
7. Claim(s) 1 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Levy (US 5,768,803).
Regarding Claim 1, Levy discloses a method for improving bipedal motion (Abstract) where the heel of a foot is raised while the toes of the foot are in mechanical contact with a ridge (i.e. front portion of 16/32) on the inside of footwear (i.e. while walking in a shoe the foot may be flexed such that the heel of the sole is lifted off the ground while the sole having toes of the foot stays in contact with a ridge), said method comprising the steps of: placing a portion of the foot over an drop-off (i.e. sidewall of front portion of 16/32 facing 20) and the ridge (i.e. front portion of 16/32) of a sole on the inside of footwear (10); wherein the drop-off and ridge define a border of an empty cutout (void at 18 when all of 20 & 22 are removed) said sole and, raising the heel of the foot so that a two thirds portion of the ball of the foot is positioned to hover over the empty cutout (Col.2, line 66-Col.3, line 17; as seen in Fig.1 & 2, insofar as is definite the rear two thirds of the ball of a foot are positioned to hover over the empty cutout), a one third portion (as seen in Fig.1 & 2, the third the ball of a foot nearest the toes is resting on the front portion of 16/32) of the ball of the foot closest to the toes receives unalleviated pressure from the ridge via contact therewith, and at least a portion of the pads of the toes are positioned on the ridge (as seen in Fig.1 & 2; Col.2, line 66-Col.3, line 17). Further, it is noted that the sole will fit differently sized feet in different manners and an intended relative position of the sole to the wearer's foot anatomy is functional and not patentably significant.
Response to Arguments
In view of Applicant's amendment, the search has been updated, newly modified grounds of rejection and new prior art has 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 grounds of rejection and the new ground(s) of rejection.
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