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
Applicant’s amendment of 07/31/2025 is acknowledged.
Claims 1-9, 11-14, and 16-18 are presented.
Claims 1, 13, and 16 are presented in independent form and are amended.
Dependent claims 3 and 5 are amended.
Dependent claims 17-18 are new.
The present office action treats claims 1-9, 11-14, and 16-18 on the merits.
The present office action is a final rejection.
Response to Arguments
Applicant’s REMARKS of 07/31/2025 are fully considered (see p. 8-13) are fully considered.
Regarding “The Examiner is invited to telephone” (p. 13): Applicant’s arguments are fully considered. Examiner acknowledges the comment, and, upon considering the amendment and remarks of 07/31/2025 and upon further consideration of the disclosure as filed, it appears that an interview regarding the amendment of 07/31/2025 would not result in expediting the allowance of the application; however, it is noted that Examiner generally promotes interviews that improve the mutual understanding of specific issues in an application. It is further noted that there is no power of attorney on file in the application; attention is drawn to MPEP 713 which states and in relevant part:
...Generally, interviews that improve the mutual understanding of specific issues in an application should be promoted...In general, interviews are not granted to persons who lack proper authorization from the applicant or attorney or agent of record in the form of a submission on file in the application. A MERE POWER TO INSPECT IS NOT SUFFICIENT AUTHORITY FOR GRANTING AN INTERVIEW INVOLVING THE MERITS OF THE APPLICATION.¶Interviews are generally not granted to registered individuals to whom there is no power of attorney or authorization to act in a representative capacity.
Further information regarding the scheduling of Applicant-initiated interviews is provided in the Conclusion section of this office action.
Regarding Claim Objections (p. 8): Applicant’s arguments are fully considered. Applicant’s claim amendment renders the objection of the previous office action moot.
Regarding Abstract Objections (p. 8): Applicant’s arguments are fully considered. Applicant’s Abstract amendment of 07/31/2025 is acknowledged and is entered. Upon review of the amended Abstract, the Abstract is again objected to; see objection below.
Regarding Rejections under 35 USC § 112 (p. 8-9): Applicant’s arguments are fully considered.
With respect to the 35 USC 112(a) rejection of claims 8-9, Applicant argues (p. 8):
The Examiner contends that claims 8 and 9 are indefinite because the claims are inconsistent with the amended independent claims. In this regard, the Examiner contends that claim 6 recites that the heel insert comprises a heel wedge insert adapted to elevate and tilt the heel in a varus or valgus position.
Examiner’s reply:
Applicant’s arguments are fully considered and are not persuasive if only because they are not commensurate with the rejection as applied. Claims 8-9 were rejected under 35 USC 112 (a) as failing to comply with the written description requirement, and the rejection does not “contend that claims 8 and 9 are indefinite” as argued. In addition, claim 6 was not relied upon to reject claims 8 or 9.
Applicant further argues (p. 8-9)
The Examiner also contends that claim 1 recites that the heel insert comprises a first heel end having a first height and a second anterior end having a second height and a surface extending between the first heel end and the second anterior end, wherein the second height is less than the first height and wherein a gradient of the surface is between 0.02 and 0.08. The Examiner contends that the specification does not contain any disclosure of a heel insert having ends and surface gradient and also comprising a heel wedge insert adapted to tilt the heel in a varus or valgus position.
Applicant respectfully disagrees. Applicant submits that claim 8 is directed towards a heel insert comprising the gradient and features recited in independent claim 1. Claim 8 further comprises a heel wedge that is adapted to elevate and tilt the heel in a varus or valgus position. Applicant respectfully submits that paragraph 101 of the specification teaches this feature. As such, Applicant respectfully requests withdrawal of this rejection.
Examiner’s reply:
Applicant’s arguments are fully considered and are not persuasive.
Claim 1 recites “the heel insert comprises a first heel end having a first height, a second anterior end having a second height and a surface extending between the first heel end and the second anterior end, wherein the second height is less than the first height, and wherein a gradient of the surface is between 0.02 and 0.08”, and claim 8 recites “wherein the heel insert comprises a heel wedge insert adapted to elevate and tilt the heel in a varus or valgus position”, and there is no support in the disclosure as filed for this combination of features. Paragraph 101 states in its entirety:
As used herein, the term "heel insert" and the variations thereof refer to an insert that is positioned or located beneath a heel portion of a footbed and atop a heel portion of a shoe. The heel insert may be a heel raising insert that raises or elevates the heel portion of the footbed above the heel portion of the shoe and tilts the heel portion of the footbed in a forward direction away from the rear or back portion of the shoe. The heel insert may, alternatively, be a heel wedge insert having an angled or sloped surface that raises the heel portion of the footbed above the heel portion of the shoe and tilts the heel portion of the footbed in a forward direction away from the rear and toward either the medial side or the lateral side of the footbed or shoe. This tilting of the heel is also commonly known as varus and valgus positions. An example of a heel insert in the form of a varus (i.e. outwardly tilting or laterally tilting) heel wedge 500 is shown in Figure 20. The heel wedge insert is particularly useful in the management of many painful conditions affecting the plantar area of the heel and midfoot (underneath area) and posterior area of the foot (i.e. behind the heel).
Although paragraph 101 describes “a heel wedge insert having an angled or sloped surface that raises the heel portion of the footbed above the heel portion of the shoe and tilts the heel portion of the footbed in a forward direction away from the rear and toward either the medial side or the lateral side of the footbed or shoe. This tilting of the heel is also commonly known as varus and valgus positions”, it does not state a heel insert having heights and a gradient as claimed in claim 1 and also comprising a heel wedge insert adapted to elevate and tilt the heel in a varus or valgus position. It is noted the “insert having an angled or sloped surface that raises the heel portion of the footbed above the heel portion of the shoe and tilts the heel portion of the footbed in a forward direction away from the rear and toward either the medial side or the lateral side of the footbed or shoe” of paragraph 101 is described in such a way a height of a heel end is not specified; a height of an anterior end is not specified; a value and/or range of surface gradient is not specified; and combined heights and gradient range are not specified in paragraph 101.
With respect to the 35 USC 112(b) rejections of claims 5, 13-14, and 16, Applicant argues (p. 9):
Applicant amends such claims to address these objections, so Applicant asserts that these rejections are now moot.
With respect to claim 5, the Examiner contends that the claims are not clear which footbed, heel insert, items of footwear are being limited. Applicant respectfully disagrees.
Applicant submits that the person skilled in the art armed with the knowledge of the specification would not find these claims unclear. In this regard, the person skilled in the art would appreciate that the footwear insert assembly comprises a pair of heel inserts, whereby each heel insert is adapted for insertion beneath a particular footbed of each of the pairs of footbed. Furthermore, the person skilled in the art would appreciate that the footbed and heel insert cooperate within the item of footwear (e.g., left or right) to raise a heel portion of the footbed. Furthermore, the person skilled in the art would also appreciate that length of the heel insert is approximately half of the length of the associated footbed. Applicant respectfully requests withdrawal of this rejection.
Examiner’s reply:
Applicant’s arguments are fully considered. Applicant’s amendments to claim 5 renders the 35 USC 112 (b) rejection of claim 5 as applied in the previous office action moot; however, the amendment has necessitated a new 35 USC 112(b) rejection. Applicant’s amendments to claim 16 renders the 35 USC 112 (b) rejection of claim 16 as applied in the previous office action moot. Regarding claim 13 and claim 14 from which it depends: Applicant’s arguments are fully considered and are not persuasive. As stated in the office action of 04/02/2025 (see p. 6-7), claim 13 is indefinite in that limitations on “the footbed”; “the heel insert”; “the first and second contoured footbeds” and “the item of footwear” are not clear as to which footbed(s) and/or heel insert(s) and/or item(s) of footwear is/are being further limited. Applicant’s specific argument that “the person skilled in the art would appreciate that the footwear insert assembly comprises a pair of heel inserts, whereby each heel insert is adapted for insertion beneath a particular footbed of each of the pairs of footbed. Furthermore, the person skilled in the art would appreciate that the footbed and heel insert cooperate within the item of footwear (e.g., left or right) to raise a heel portion of the footbed” is fully considered and is not persuasive in that a capability of each heel insert for insertion beneath a “particular” footbed, as argued, is not claimed and that cooperation and/or a capability to cooperate within a “left” and/or “right” item of footwear, as argued, is not claimed.
Regarding Rejections under 35 USC § 103 (p. 9-12): Applicant’s arguments are fully considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Specification – Abstract amendment
Applicant’s Abstract amendment of 07/31/2025 is acknowledged and is entered.
Specification – Abstract objection
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 is not within the range of 50 to 150 words in length. 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 Rejections - 35 USC § 112(a)
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.
Claims 8-9 are 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 8 recites new matter in reciting at lines 1-3 “The footwear assembly of claim 1 wherein the heel insert comprises a heel wedge insert adapted to elevate and tilt the heel in a varus or valgus position”. Parent claim 1 recites heel insert comprising a first heel end having a first height and a second anterior end having a second height and a surface extending between the first heel end and the second anterior end wherein the second height is less than the first height and wherein a gradient of the surface is between 0.02 and 0.08. However, there is no express disclosure of a heel insert having ends and surface gradient as claimed in parent claim 1 and also being/comprising a heel wedge insert adapted to tilt the heel in a varus or valgus position.
Claim 9 is rejected if only because it depends from a rejected claim. Claim 9 also recites additional new matter in reciting at lines 1-2 “wherein the heel wedge insert comprises a varus wedge insert or a valgus wedge insert”. As referenced above in addressing claim 8 new matter, there is no express disclosure of a heel insert having ends and surface gradient as claimed in parent claim 1 and also being/comprising a heel wedge insert adapted to tilt the heel in a varus or valgus position, and as such, the heel wedge insert being/comprising a varus wedge insert or a valgus wedge insert in combination with the ends and surface gradient as claimed in parent claim 1 is new matter.
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.
Claims 5 and 13-14 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 5 recites “the forefoot insert”, which lacks antecedent basis such that it is not clear whether claim 5 is introducing a newly claimed forefoot insert and/or should be properly dependent upon claim 3, which introduces “a forefoot insert” (claim 3 line 5). For the purpose of applying art, claim 5 is interpreted as if it depends from claim 3.
Claim 13 lines 15-16 recites “a pair of heel inserts, each heel insert adapted for insertion entirely beneath one footbed of each of the pairs of footbeds”. Claim 13 lines 16-18 further limit “the footbed” and “the heel insert” and “the first and second contoured footbeds” and “the item of footwear” such that it is not clear which footbed(s) and/or heel insert(s) and/or item(s) of footwear is/are being further limited. In addition, lines 19-26 further limit “the heel insert” such that it is not clear whether the further limitations at lines 19-26 are directed to only one of the pair of heel inserts or to each of the pair of heel inserts. For the purpose of applying art, the phrase “a pair of heel inserts, each heel insert adapted for insertion beneath one footbed of each of the pairs of footbeds such that the footbed and the heel insert cooperate within the item of footwear to raise a heel portion of the footbed, wherein a length of each heel insert is approximately half of a length of the first and second contoured footbeds” is met if a prior art teaches a first heel insert configured for insertion beneath any one or more of the footbeds as introduced in claim 13 lines 4-14 and a second heel insert configured for insertion beneath any one or more of the footbeds as introduced in claim 13 lines 4-14 wherein the first heel insert is configured to cooperate within either item of footwear to raise a heel portion of any one or more of the footbeds as introduced in claim 13 lines 4-14 and wherein the second heel insert is configured to cooperate within either item of footwear to raise a heel portion of any one or more of the footbeds as introduced in claim 13 lines 4-14 further wherein a length of the first heel insert is approximately half of a length of any of the footbeds as introduced in claim 13 lines 4-14 further wherein further wherein a length of the second heel insert is approximately half of a length of any of the footbeds as introduced in claim 13 lines 4-14. In addition and for the purpose of applying art, the limitations to “the heel insert” at lines 19-26 are interpreted as if they are in reference to the first heel insert; and the recitations of “footbeds” and “footbed” at lines 25-26 are in reference to any footbed or footbeds as introduced in claim 13 lines 4-14.
Claim 14 is indefinite if only because it depends from an indefinite claim.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-2, 4, 6-9, 11-12, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Guiotto, EP-2384654-A1, newly cited] in view of [Cohen, US 2008/0216359, previously cited], [Sarkozi, US 5,138,774, previously cited] and [Peveto, US 2007/0043582, newly cited].
Regarding claim 1:
Guiotto discloses:
A footwear insert assembly comprising:
an integrally formed full length footbed 3 adapted for insertion within an item of footwear (in the same manner that footbeds “known in the art” are so adapted as described in para 2), the full length footbed 3 comprising:
a first contoured (“equipped with...anatomic shaping...made for example through...bumps or ribs”; para 15) footbed 3;
wherein the first contoured footbed 3 is adapted for interchangeable insertion within an item of footwear (footbed 3 is capable of being inserted into an item of footwear and is furthermore capable of being removed therefrom such that footbed 3 is for interchangeable insertion as claimed) to thereby produce a supportive feel (“for supporting”; para 12) when worn; and
a heel insert 5 adapted for insertion in the item of footwear (in the same way that footbed 3 is so adapted) entirely beneath (as in any of Figs. 4a, 4b, or 4c) the full length footbed 3 such that the full length footbed 3 and the heel insert 5 cooperate (as in any of Figs. 4a, 4b, or 4c) with the item of footwear (when inserted into an item of footwear and resting upon said item of footwear) to raise a heel portion of the full length footbed 3 (via heel insert 5 being provided beneath footbed 3; as in any of Figs. 4a, 4b, or 4c), wherein a length of the heel insert appears to be approximately half of a length of the first contoured footbed (Figs. 1-4; it is noted the term “approximately” means “close to; around; roughly or in the region of”; approximately. (n.d.) Collins English Dictionary – Complete and Unabridged, 12th Edition 2014. (1991, 1994, 1998, 2000, 2003, 2006, 2007, 2009, 2011, 2014). Retrieved September 16 2025 from https://www.thefreedictionary.com/approximately),
wherein the heel insert 5 comprises a first heel end (at 19; Figs. 2a, 2b, 2c; 4a, 4b, 4c) having a first height (S1 or S2 or S3), a second anterior end (at 17; Figs. 2a, 2b, 2c, 4a, 4b, 4c) having a second height (the height at 17 wherein heel insert comprises “progressively increasing height from its own front portion 17 to its own rear portion 19”; para 16) and a surface (the surface defining the “progressively increasing height from its own front portion 17 to its own rear portion 19”; para 16) extending between the first heel end and the second anterior end (para 16), wherein the second height is less than the first height (para 16), wherein the heel insert 5 is substantially complementary to the shape (para 12; Figs. 1-4) of a heel portion of the full length footbed such that the combination of the heel insert and the full length footbed of the pair of full length footbeds provide a substantially even lift (Figs. 4a, 4b, or 4c).
Guiotto does not expressly disclose wherein a length of the heel insert is approximately half of a length of the first footbed.
However, Cohen teaches a footwear insert (“shoe insert”; para 1) assembly 10 and 20 (i.e. the combined “shoe pad body 10” and “air bag 20”; para 26) comprising a first footbed 10 and a heel insert 20 wherein the heel insert 20 “extends from the heel of the shoe pad body for a distance of about half the length of the shoe pad body” (para 23) and wherein “Due to the pressure concentrated on the heel part of the” footbed 10 “during the process of taking a step, the length of the” heel insert “20...designed to extend from the shoe pad body 10 to the middle part of the shoe pad body 10” (para 29).
It 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 to have modified the heel insert of Guiotto such that a length of the heel insert is approximately half of a length of the first footbed, as in Cohen, in order to provide support to the portion of the footbed that experiences concentrated pressure forces during the course of taking a step, as suggested by Cohen (paras 23, 29).
Guiotto does not expressly disclose
and wherein a gradient of the surface is between 0.02 and 0.08.
However, Sarkozi teaches a footwear insert 10 (i.e. “removable lining element 10”; col. 3 line 22, wherein said removable lining element 10 is an “insole liner...for shoes to...support the heel area” and “to achieve...height adjustment for an individual user” (Abstract) such that it is configured for insertion into a footwear) comprising a first footbed 11 and 13 (i.e.. the combined “layer elements 11 and 13 bonded together”; col. 1 lines 24-25) and a heel insert 35 (“heel base pad 35”; col. 5 line 12) wherein the heel insert 35 comprises a first heel end 34 (i.e. “back end 34”; col. 5 line 16) having a first height (“about 1/64” – ¾””; col. 5 line 17) and a second anterior end (where heel insert 35 “terminates in a low edge thickness, as shown in Fig. 5b”; col. 5 lines 20-21) having a second height (the “low edge thickness”) and a surface extending between the first heel end and the second anterior end (the surface extending between first heel end 34 and second anterior end), wherein the second height is less than the first height (“downward taper in height from back to front by about 1/64”- ¾”...terminates in a low edge thickness, as shown in Fig. 5b”; col. 5 lines 19-21). Sarkozi further teaches “The heel base pad is about 1” – 6” in length” (col. 5 lines 21-22). And as such, Sarkozi teaches a range for heel insert length (i.e. about 1 inch to about 6 inches as described in col. 5 lines 21-22) and also teaches a range for downward taper along the surface extending between first heel end and second anterior end (i.e. about 1/64 inch to about ¾ inch, as described in col. 5 lines 19-21).
For a heel insert of about 1 inch length, a downward taper of about 1/64 inch affords a gradient of about 0.016 because (1/64)/1 = 0.016 (consistent with how the present disclosure represents gradient in para [0093]).
For a heel insert of about 1 inch length, a downward taper of about 3/4 inch affords a gradient of about 0.75 because (3/4)/1 = 0.75 (consistent with how the present disclosure represents gradient in para [0093]).
For a heel insert of about 6 inch length, a downward taper of about 1/64 inch affords a gradient of about 0.0026 because (1/64)/6 = 0.0026 (consistent with how the present disclosure represents gradient in para [0093]).
For a heel insert of about 6 inch length, a downward taper of about 3/4 inch affords a gradient of about 0.125 because (3/4)/6 = 0.125 (consistent with how the present disclosure represents gradient in para [0093]).
In providing ranges for heel insert length and downward taper between first heel end and second anterior end, therefore, Sarkozi teaches a range of gradients that includes the values listed above (i.e. about 0.016, about 0.75, about 0.0026, and about 0.125)—and also includes intermediate values within the extreme values of about 0.0026 and about 0.125. For example, a heel insert length of five inches and a downward taper of 0.2 inches affords a gradient of 0.04 because 0.2/5=0.04.
Because Sarkozi is concerned with desired height adjustment and support for a shoe user (Abstract) and provides a range for gradient (i.e. between about 0.0026 and about 0.125) encompassing the claimed limitation, the claimed range is considered as a result-effective variable such that one of ordinary skill could have arrived at the claimed gradient range through routine experimentation in order to provide desired footwear insert assembly properties. The claimed gradient range is merely an optimum or workable gradient range and the gradient of the heel insert surface is expected to affect the height and positioning of the footbed overlying the heel insert surface and also affect the positioning of the user’s heel relative to the rest of his foot and the other footwear insert assembly structure as well as the comfort and support provided by the footwear insert assembly.
Therefore, it 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 to have modified the heel insert of Guiotto such that a gradient of the surface is between 0.02 and 0.08 in order to yield the predictable result of a footwear insert assembly whose heel insert surface gradient is configured to accommodate the footbed above the heel insert in such a way so as to position the footwear insert assembly within an article of footwear and to position the wearer’s foot on the footwear insert assembly within the footwear in a desirable positional configuration afforded by such a gradient and/or to provide a desired level of comfort and/or a desired level support to the wearer afforded by providing the heel insert surface with such a gradient.
Guiotto does not expressly disclose
a pair of integrally formed full length footbeds adapted for insertion within an item of footwear, the pair of full length footbeds comprising:
a first contoured footbed having a contoured arch portion, the contoured arch portion of the first contoured footbed having a thickness providing a first degree of arch support;
a second contoured footbed having a contoured arch portion, the contoured arch portion of the second contoured footbed having a thickness that is less than the thickness of the contoured arch portion of the first contoured footbed, the contoured arch portion of the second contoured footbed providing a second degree of arch support;
wherein each of the first contoured footbed and the second contoured footbed is adapted for interchangeable insertion within an item of footwear to thereby produce a supportive feel when worn; and
wherein the heel insert is substantially complementary to the shape of a heel portion of the pair of full length footbeds such that the combination of the heel insert and one full length footbed of the pair of full length footbeds provide a substantially even lift.
However and in further view of Guiotto:
Guiotto para 20 teaches providing a pair of footbeds: “the left one” and “the right one” wherein the footbeds 3 “of the right foot and of the left foot” are configured such that a user is “able to balance height offsets between the two legs of a user by simply connecting the” footbed “3 of the right foot and of the left foot to respective” heel inserts “5 having adequate heights” (para 20).
It 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 to have modified the modified Guiotto such that its footwear insert assembly comprises a pair of integrally formed full length footbeds adapted for insertion within an item of footwear, the pair of full length footbeds comprising:
a first contoured footbed; a second contoured footbed; wherein each of the first contoured footbed and the second contoured footbed is adapted for interchangeable insertion within an item of footwear to thereby produce a supportive feel when worn; and wherein the heel insert is substantially complementary to the shape of a heel portion of the pair of full length footbeds such that the combination of the heel insert and one full length footbed of the pair of full length footbeds provide a substantially even lift in order to yield a footwear insert assembly whose heel insert can be combined with either of the first contoured footbed or the second contoured footbed for the purpose of accommodating leg dimension differences of a wearer, as suggested by Guiotto (para 20).
Regarding the first contoured footbed having a contoured arch portion, the contoured arch portion of the first contoured footbed having a thickness providing a first degree of arch support; the second contoured footbed having a contoured arch portion, the contoured arch portion of the second contoured footbed having a thickness that is less than the thickness of the contoured arch portion of the first contoured footbed, the contoured arch portion of the second contoured footbed providing a second degree of arch support:
Guiotto para 20 teaches providing a pair of footbeds: “the left one” and “the right one” wherein the footbeds 3 “of the right foot and of the left foot” are configured such that a user is “able to balance height offsets between the two legs of a user by simply connecting the” footbed “3 of the right foot and of the left foot to respective” heel inserts “5 having adequate heights” (para 20).
One of ordinary skill would recognize that—in addition to addressing leg height differences—a footbed designed for a left foot could afford a different degree and/or type of support for part of the left foot vs part of the right foot. And Guiotto para 15 teaches “the surface of the insole 3 aimed to get in contact with feet, and in particular the support of the foot sole 11, the intermediate portion for supporting the center of the foot sole 15 and the rear portion 13, can be equipped with any particular anatomic shaping that is substantially known in the art, made for example through suitable bearings, bumps or ribs that are suitably arranged, without therefore departing from the scope of the present invention”.
Nevertheless, Peveto teaches providing a contoured (via at least contour of an arch support of Figs. 12a-12c) footbed (“insole”; para 81) having a contoured arch portion (1210, 1220, or 1230), the contoured arch portion having a thickness (T1 or T2; para 82) providing a first degree of arch support (the arch support of Fig. 12c having thickness T2 providing “less flexible arch support”; each of the arch supports having T1 providing “more flexible support”; para 82).
Peveto further teaches “It's very unusual, statistically, for people have exactly the same left foot and right foot size...For example, it is very easy for people to have a size or size-and-a-half difference between the left foot and right foot. According to the present invention, each foot can be provided with...footwear components...used to correct the volume, the arch, and/or the instep, for example, to get the foot in equal positions in the same vended size shoe. For example, if one foot is an 11.5 and one foot is an 11, a determination is made whether to buy the 11 and reduce the insole thickness, to go with the 11.5 and make the insole a little thicker. As another example, if there is a two size differences between feet (one is a size 9 and one is an 11), a 10.5 size shoe shell can be used and the insole and arch supports may be different so that each shoe fits comfortably on its respective foot” (para 157).
It 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 to have modified the modified Guiotto such that its first contoured footbed has a contoured arch portion, the contoured arch portion of the first contoured footbed having a thickness providing a first degree of arch support; its second contoured footbed having a contoured arch portion, the contoured arch portion of the second contoured footbed having a thickness that is less than the thickness of the contoured arch portion of the first contoured footbed, the contoured arch portion of the second contoured footbed providing a second degree of arch support in order to provide the pair of contoured footbeds in such a way that one of the pair is configured to fit comfortably on a left foot and the other of the pair is configured to fit comfortably on a right foot when a wearer prefers the first degree of arch support for his left foot and the second degree of support for his right foot, as suggested by Peveto (paras 82 and 157).
Regarding claim 2:
Guiotto in view of Cohen, Sarkozi, and Peveto teach The footwear insert assembly of claim 1 as set forth above.
As applied to claim 1, the modified Guiotto does not meet the limitation further comprising an item of footwear.
However and in further view of Guiotto: Guitto teaches “Insoles are...to be inserted inside a shoe” item of footwear (para 2).
It 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 to have modified the modified Guiotto such that it further comprises a shoe item of footwear in order to yield the predictable result of an item of footwear configured to protect a foot of a wearer wherein a combined footbed and heel insert are capable of insertion therein for the purpose of providing support to the wearer’s foot inside the item of footwear.
Regarding claim 4:
Guiotto in view of Cohen, Sarkozi, and Peveto teach The footwear insert assembly of claim 1 as set forth above.
The modified Guiotto further meets the limitation wherein one of the pair of the full length footbeds having the heel insert beneath a heel portion of the one of the pair of the full length footbeds is inserted into the item of footwear to provide a raised heel portion of the one of the pair of the full length footbeds.
(Guiotto Figs. 4a, 4b, and/or 4c show(s) a footbed having heel insert beneath a heel portion of the footbed to provide raised heel portion such that the limitation is met.)
Regarding claim 6:
Guiotto in view of Cohen, Sarkozi, and Peveto teach The footwear insert assembly of claim 1 as set forth above.
Guiotto further discloses wherein each of the first and second contoured footbeds comprises a medial side and a lateral side (Figs. 1 and 3 show such sides of the first contoured footbed and Guiotto is modified so as to be provided with a second contoured footbed which similarly has medial and lateral sides so as to accommodate a heel insert thereunder and so as to provide arch support).
As applied to claim 1, the modified Guiotto does not meet the limitation wherein the contoured arch portion of each of the first and second contoured footbeds is located along the respective medial side.
However and in further view of Peveto:
Peveto teaches (para 72) an “area 809...to receive an arch support” located along a medial side (Fig. 8, wherein 811 and 803 correspond to “medial” (para 72) areas such that 809 is along a medial side; refer to position of 809 relative to medial areas 803, 811 in Fig. 8).
It 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 to have modified the modified Guiotto such that the contoured arch portion of each of the first and second contoured footbeds is located along the respective medial side in order to afford medial arch support to each of the first and second contoured footbeds.
Regarding claim 7:
Guiotto in view of Cohen, Sarkozi, and Peveto teach The footwear insert assembly of claim 1 as set forth above.
Guiotto further discloses wherein the heel insert 5 comprises a heel raising insert 5 adapted to uniformly elevate the heel (Figs. 4a, 4b, and/or 4c).
Regarding claim 8:
Guiotto in view of Cohen, Sarkozi, and Peveto teach The footwear insert assembly of claim 1 as set forth above.
Guiotto further discloses the heel insert 5 comprises a heel wedge insert 5.
Guiotto does not expressly disclose wherein the heel insert comprises a heel wedge insert adapted to elevate and tilt the heel in a varus or valgus position.
However and in further view of Sarkozi:
Sarkozi teaches a heel insert (“heel base pad”; col. 5 line 27) that is a heel wedge insert (owing to left-right or right-left taper in addition to front-back taper as described in col. 5 lines 39-43) adapted to elevate and tilt a heel in a varus or valgus position (i.e. “inclined in either a right direction 43, or left direction 44, as shown in FIGS. 5e and 5f, respectively...inclinations...offset corresponding angular deformities when present in the user’s heel area... defines a left to right taper varying from about 1/64"-3/4", and terminates in a thin edge, and FIG. 5f shows the taper in the right to left direction. The front to back taper of the heel base pad 43 is the same or similar to that of FIG. 5b”; col. 5 lines 27-43).
It 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 to have modified the modified Guiotto such that its heel insert comprising its heel wedge is provided with a left-to-right taper or a right-to-left taper so as to be adapted to elevate and tilt the heel in a varus or valgus position, as in Sarkozi, in order to offset angular deformities of a user’s heel area, as taught by Sakrozi (col. 5 lines 30-31).
Regarding claim 9:
Guiotto in view of Cohen, Sarkozi, and Peveto teach The footwear insert assembly of claim 8 as set forth above.
The modified Guiotto further meets the limitation wherein the heel wedge insert comprises a varus wedge insert or a valgus wedge insert.
(The modified Guiotto comprises a left-to-right taper or a right-to-left taper in order to afford the capability of to elevate and tilt the heel in a varus or valgus position; see above treatment of claim 8. As such, the heel wedge insert is either a varus wedge insert or a valgus wedge insert.)
Regarding claim 11:
Guiotto in view of Cohen, Sarkozi, and Peveto teach The footwear insert assembly of claim 8 as set forth above.
The modified Guiotto does not expressly meet the limitation wherein the gradient of the surface is between 0.03 and 0.05.
However and in further view of Sarkozi:
As explained in above addressing of the gradient of claim 1:
In providing ranges for heel insert length and downward taper between first heel end and second anterior end Sarkozi teaches a range of gradients that includes the values listed above in addressing of claim 1 (i.e. about 0.016, about 0.75, about 0.0026, and about 0.125)—and also includes intermediate values within the extreme values of about 0.0026 and about 0.125. For example, a heel insert length of five inches and a downward taper of 0.2 inches affords a gradient of 0.04 because 0.2/5=0.04.
Because Sarkozi is concerned with desired height adjustment and support for a shoe user (Abstract) and provides a range for gradient (i.e. between about 0.0026 and about 0.125) encompassing the claimed limitation, the claimed range is considered as a result-effective variable such that one of ordinary skill could have arrived at the claimed gradient range through routine experimentation in order to provide desired footwear insert assembly properties. The claimed gradient range is merely an optimum or workable gradient range and the gradient of the heel insert surface is expected to affect the height and positioning of the footbed overlying the heel insert surface and also affect the positioning, of the user’s heel relative to the rest of his foot and the other footwear insert assembly structure as well as the comfort and support provided by the footwear insert assembly.
Therefore, it 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 to have modified the modified Guiotto such that a gradient of the surface is between 0.03 and 0.05 in order to yield the predictable result of a footwear insert assembly whose heel insert surface gradient is configured to accommodate the footbed 30 above the heel insert 20 in such a way so as to position the footwear insert assembly within an article of footwear and to position the wearer’s foot on the footwear insert assembly within the footwear in a desirable positional configuration afforded by such a gradient and/or to provide a desired level of comfort and/or a desired level support to the wearer afforded by providing the heel insert surface with such a gradient.
Regarding claim 12:
Guiotto in view of Cohen, Sarkozi, and Peveto teach The footwear insert assembly of claim 8 as set forth above.
The modified Guiotto does not expressly meet the limitation wherein the gradient of the surface is less than 0.05.
However and in further view of Sarkozi:
As explained in above addressing of the gradient of claim 1:
In providing ranges for heel insert length and downward taper between first heel end and second anterior end Sarkozi teaches a range of gradients that includes the values listed above in addressing of claim 1 (i.e. about 0.016, about 0.75, about 0.0026, and about 0.125)—and also includes intermediate values within the extreme values of about 0.0026 and about 0.125. For example, a heel insert length of five inches and a downward taper of 0.2 inches affords a gradient of 0.04 because 0.2/5=0.04.
Because Sarkozi is concerned with desired height adjustment and support for a shoe user (Abstract) and provides a range for gradient (i.e. between about 0.0026 and about 0.125) encompassing the claimed limitation, the claimed range is considered as a result-effective variable such that one of ordinary skill could have arrived at the claimed gradient range through routine experimentation in order to provide desired footwear insert assembly properties. The claimed gradient range is merely an optimum or workable gradient range and the gradient of the heel insert surface is expected to affect the height and positioning of the footbed overlying the heel insert surface and also affect the positioning, of the user’s heel relative to the rest of his foot and the other footwear insert assembly structure as well as the comfort and support provided by the footwear insert assembly.
Therefore, it 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 to have modified the modified Guiotto such that a gradient of the surface is less than 0.05 in order to yield the predictable result of a footwear insert assembly whose heel insert surface gradient is configured to accommodate the footbed 30 above the heel insert 20 in such a way so as to position the footwear insert assembly within an article of footwear and to position the wearer’s foot on the footwear insert assembly within the footwear in a desirable positional configuration afforded by such a gradient and/or to provide a desired level of comfort and/or a desired level support to the wearer afforded by providing the heel insert surface with such a gradient.
Regarding claim 17:
Guiotto in view of Cohen, Sarkozi, and Peveto teach The footwear insert assembly of claim 1 as set forth above.
Guiotto further discloses wherein the heel insert and the heel portion of the full length footbed have substantially the same width (Figs. 1 and 3; para 12 discloses “the first connection means 7 comprise at least one protrusion and the second connection means 9 comprise at least one recess whose shape and size are complementary with such protrusion” such that the limitation is met; it is noted the term “substantial” means “Considerable in importance, value, degree, amount, or extent”; substantially. (n.d.) American Heritage® Dictionary of the English Language, Fifth Edition. (2011). Retrieved September 17 2025 from https://www.thefreedictionary.com/substantially).
Claim(s) 3 and 5, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over [Guiotto, EP-2384654-A1, newly cited], [Cohen, US 2008/0216359, previously cited], [Sarkozi, US 5,138,774, previously cited], and [Peveto, US 2007/0043582, newly cited] as applied to claim 1 above, and further in view of [Deloreia, US 6,041,523, previously cited].
Regarding claim 3:
Guiotto in view of Cohen, Sarkozi, and Peveto teach The footwear insert assembly of claim 1 as set forth above.
Guiotto does not expressly disclose further comprising at least one of:
a half length footbed adapted for insertion within the item of footwear to provide a wide fitting, wherein the heel insert is insertable beneath the half length footbed; or
a forefoot insert adapted for insertion beneath one of the pair of the full length footbeds within the item of footwear so that the full length footbed and the forefoot insert cooperate with the item of footwear to produce a narrow fitting.
However, Deloreia teaches a half length footbed 10 (i.e. “shoe insert 10”; col. 2 line 17) adapted for insertion within an item of footwear (“the user’s shoe”; col. 2 line 23; no reference numeral) to provide a wide fitting (Deloreia is configured such that a wearer with a wide foot can fit atop the half length footbed), wherein a heel region of the item of footwear is insertable beneath the half length footbed (half length footbed 10 is configured to be “placed in the heel of the shoe”; col. 2 line. 42 such that the heel of the shoe is configured to be inserted beneath the half length footbed). Deloreia further teaches the half length footbed 10 is appropriate for “performing squats and other weight-training exercises which require that the person's heels be elevated during the exercise” (col. 1 lines 37-40).
It 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 to have modified the modified Guiotto such that it is further provided with a half length footbed adapted for insertion within the item of footwear to provide a wide fitting, wherein the heel insert is insertable beneath the half length footbed, in the same manner that Deloreia is provided with a half length footbed wherein a heel region of underlying footwear is insertable beneath the half length footbed, in order to permit a wearer to elevate his heel and participate in an squat and/or other weight-training exercise that requires a heel to be elevated, as taught by Deloreia (col. 1 lines 37-40).
Regarding claim 5:
Guiotto in view of Cohen, Sarkozi, Peveto, and Deloriea teach The footwear insert assembly of claim 3 as set forth above.
The modified Guiotto further meets the limitation wherein the forefoot insert is configured to be provided beneath a forward portion of the one of the pair of full length footbeds and is configured to be inserted into the item of footwear to provide a narrow fit.
(Claim 5 is indefinite; see 35 USC 112 rejections above. As best understood, claim 5 further limits the forefoot insert of claim 3, which is presented in the alternative. As such, and as best understood, if a given prior art footwear insert assembly meets the limitation at claim 3 lines 3-4, said given prior art footwear insert assembly is not required to have the forefoot insert of claim 3 lines 5-7 and/or its capability as recited in claim 5 in order to meet claim 5 limitations. Claim 3 limitations are met as demonstrating that the modified Guiotto comprises the half length footbed and its capability as described in claim 3 lines 3-4; see above treatment of claim 3. As such, Guiotto in view of Cohen, Sarkozi, Peveto, and Deloriea as applied to claim 3 above also meets claim 5 limitations if only because the modified Guiotto meets the half length footbed limitation of claim 3 lines 3-4.)
Claim(s) 13-14, as best understood, is/are rejected