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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 27 February 2025 has been entered. Claims 1, 3, 7, and 9 is/are amended. Claim 13 is newly added. Claims 4-6 and 10-12 remain withdrawn. Claims 1-3, 7-9, and 13 are presented for examination on the merits.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim(s) 1-3, 7-9, and 13 is/are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Claim 1 positively claims portions of the human anatomy, which is not patent eligible subject matter. It is recommended that Applicant adopt language such as "configured to" be associated with the recited portions of the human anatomy (a second toe ball, a third toe ball, and a fourth toe ball) in order to avoid positively claiming human anatomy. A suggested edit for the recitation “the U shape being formed such that a part of the lower cushioning portion at which a second toe ball, a third toe ball, and a fourth toe ball are located is exposed” should be amended to read “the U shape being formed such that a part of the lower cushioning portion is configured at a second toe ball, a third toe ball, and a fourth toe ball are located is exposed”.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 1-2, 7-8, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grim et al. (US 5,329,705 A).
Regarding claim 1, Grim discloses a shoe insole (52) comprising:
an insole main body (54) having a substantially foot shape (Fig. 2);
a lower cushioning portion (64, and 64 including mating hook and loop material as disclosed in col. 4 lines 38-42) provided on the insole main body in a front portion (Fig. 2 shows 64 provided on 54; see annotated Fig. 2 below of a front portion as depicted by a front rectangle) and configured to support a part from a tiptoe (see annotated Fig. 2 below) to a position of a metatarsal head part (see annotated Fig. 2 below);
an upper cushioning portion (66, 68) having a substantially U shape provided on the lower cushioning portion (col. 2 lines 30-33 & 56-58 disclose a plurality of 66 and 68 are square patterns and are removable sections, and therefore, the plurality of 68 “having a substantially U shape provided on the lower cushioning portion” is within the scope of Grim) and configured to support a part corresponding to the positions of a toe, a first toe ball, and a fifth toe ball (see annotated Fig. 2 below, where the part corresponding to the positions of a toe, a first toe ball, and a fifth toe ball is the part between the labeled “part from the tiptoe” to “the position of a metatarsal head part”), the U shape being formed such that a part of the lower cushioning portion at which a second toe ball, a third toe ball, and a fourth toe ball are located is exposed (Fig. 2, where 70 is the area that exposes 64 and the mating hook and loop material on 64 as disclosed in col. 4 lines 38-42) and is configured to be in contact with the second toe ball, the third toe ball, and the fourth toe ball (Fig. 2, once a plurality of 66 and 68 sections are removed to expose 64 and the mating hook and loop material on 64 to be in contact with the second, third, and fourth toe ball);
and a heel supporting portion (see annotated Fig. 2 below) provided on the insole main body in a back portion (see annotated Fig. 2 below) and configured to support a part corresponding to the position of the heel (see annotated Fig. 2 below; col. 4 lines 15-17).
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Regarding claim 2, Grim further discloses the shoe insole according to claim 1, wherein the height of a lamination of the lower cushioning portion and the upper cushioning portion is substantially identical to the height of an upper face of the heel supporting portion (see annotated Fig. 2 above of claim 1 rejection, where the thickness of 64 and 66/68 of the front portion has a height that is substantially identical to the thickness/height of the annotated heel supporting portion, the upper face of the heel supporting portion is the surface facing towards the wearer’s foot).
Regarding claim 7, Grim discloses a shoe (col. 6 lines 3-5) comprising the shoe insole (52; col. 6 lines 3-5) according to claim 1, comprising:
the lower cushioning portion provided in the front portion (see annotated Fig. 2 above of claim 1 rejection) of an inner bottom of the shoe (once assembled, 52 is “of an inner bottom of the shoe” because col. 6 lines 3-5 discloses the insole is applicable to athletic shoes; Examiner notes that the inner bottom of the shoe is the surface of the shoe that contacts with surface 54 of 52) and configured to support the part from the tiptoe to the position of the metatarsal head part (see annotated Fig. 2 above of claim 1 rejection);
the upper cushioning portion having the substantially U shape provided on the lower cushioning portion (col. 2 lines 30-33 & 56-58 disclose a plurality of 66 and 68 are square patterns and are removable sections, and therefore, the plurality of 68 “having a substantially U shape provided on the lower cushioning portion” is within the scope of Grim) and configured to support the part corresponding to the positions of the toe, the first toe ball, and the fifth toe ball (see annotated Fig. 2 below, where the part corresponding to the positions of a toe, a first toe ball, and a fifth toe ball is the part between the labeled “part from the tiptoe” to “the position of a metatarsal head part”, and once 68 is removed at the second, third, and fourth toe ball, the remaining 68 corresponds to the positions of the toe, the first toe ball, and the fifth toe ball);
and the heel supporting portion provided in the back portion of the inner bottom of the shoe and configured to support the part corresponding to the position of the heel (see annotated Fig. 2 above of claim 1 rejection and col. 4 lines 15-17).
Regarding claim 8, Grim further discloses the shoe with the insole structure according to claim 7, wherein the height of a lamination of the lower cushioning portion and the upper cushioning portion is substantially identical to the height of an upper face of the heel supporting portion (see annotated Fig. 2 above of claim 1 rejection, where the thickness of 64 and 66/68 of the front portion has a height that is substantially identical to the thickness/height of the annotated heel supporting portion, the upper face of the heel supporting portion facing towards the wearer’s foot).
Regarding claim 13, Grim further discloses the shoe insole according to claim 1, wherein a level difference is formed between the lower cushioning portion and the upper cushioning portion along the substantially U shape of the upper cushioning portion (Fig. 2, where 64 and 66/68 have a level difference between the materials, and therefore, “a level difference is formed between the lower cushioning portion and the upper cushioning portion along the substantially U shape of the upper cushioning portion” inasmuch as claimed).
Claim(s) 3 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grim et al. (US 5,329,705 A), in view of Walborn et al. (US 2015/0075030 A1).
Regarding claim 3, Grim discloses the shoe insole according to claim 1, except for which comprises a toe supporting portion provided on the upper cushioning portion and configured to support the toe.
However, Walborn teaches a shoe insole (200; Fig. 3) which comprises a toe supporting portion (204; Fig. 3 shows 204 as supporting a toe of the wearer, and therefore, 204 is “a toe supporting portion”) provided on the upper cushioning portion (para. 30 & Fig. 3 disclose 204 is on 206) and configured to support the toe (Fig. 3).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the upper cushioning portion of Grim to include a toe supporting portion, as taught by Walborn, in order to improve the comfort and support for the wearer’s foot.
Regarding claim 9, Grim discloses the shoe with the insole structure according to claim 7, except for which comprises a toe supporting portion provided on the upper cushioning portion and configured to support a part corresponding to the position of the toe.
However, Walborn teaches a shoe insole (200; Fig. 3) which comprises a toe supporting portion (204; Fig. 3 shows 204 as supporting a toe of the wearer, and therefore, 204 is “a toe supporting portion”) provided on the upper cushioning portion (para. 30 & Fig. 3 disclose 204 is on 206) and configured to support a part corresponding to the position of the toe (Fig. 3, where “a part” is the area below the wearer’s toes).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the upper cushioning portion of Grim to include a toe supporting portion, as taught by Walborn, in order to improve the comfort and support for the wearer’s foot.
Response to Amendment
Applicant’s arguments filed 27 February 2025 have been fully considered and are not persuasive. In view of Applicant's amendment, the search has been updated, and new prior art has been identified and applied. Applicant's arguments drawn to the newly amended limitations have been considered but are moot in view of the newly modified ground(s) of rejection.
Conclusion
15 The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. See similar insole structures cited on the PTO-892 form attached to this Office Action.
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/G.Q.H./Examiner, Art Unit 3732
/KHOA D HUYNH/Supervisory Patent Examiner, Art Unit 3732
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