DETAILED ACTION
Claims 1, 2, 4, 6-9, 11-13 are pending. Claims 1, 2, 6, 11, and 12 are amended. Claim 10 is cancelled.
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
This office action is responsive to the amendment filed on September 15, 2025. As directed by the amendment: claims 1, 2, 6, 11, and 12 have been amended, claim 10 has been cancelled. Thus, claims 1, 2, 4, 6-9, 11-13 are presently pending in this application.
Applicant’s amendment to the claims has overcome the claim objection.
Applicant’s amendment to the claims has overcome some of the 35 USC §112(b) rejections.
Applicant’s amendment to the claim has not overcome the 35 USC §102(a)(1) rejections.
Response to Arguments
Applicant's arguments filed September 15, 2025 have been fully considered but they are not persuasive.
Applicant argues that Li does not have first and second spring arms moveable in a horizontal contact plane. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., horizontal contact plane) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Applicant reference paragraphs for support, however, no paragraph numbers are located in the specification as filed. Applicant has not limited the contact plane to a particular orientation, and neither does the Examiner. Thus, Li reads on the claims as written. Furthermore, even if the Examiner accepted Applicant’s narrow definition, the claim is still to an insole. There is no requirement that the insole be located in a sole, but could rather be located on a hardwood floor. Surely a person could slide the insole along the floor with their foot, as desired thus moving the insole in a horizontal contact plane.
Specification
The disclosure is objected to because of the following informalities: the specification amendment of March 6, 2025 fails to comply with MPEP 714 (II)(B) or 37 CFR (b)(1)(i) because it does no unambiguously identify the location for the replacement paragraphs. There are no paragraphs in the application as filed and thus it is unclear where the amendments are to take place.
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.
Claims 1, 2, 4, 6-9, and 11-13 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 1 recites that the insole upper side is intended to bear a surface of a sole of the foot from a heel region up until, but not including, a toe region of the sole of the foot. There is no support for this language. At best, Fig. 1B shows that the insole does not extend the entire length of the unclaimed sole 6. However, no region is specified and it appears that at least a portion of the toes of a user would engage with the end of the insole.
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.
Claim 1, 2, 4, 6-9, and 11-13 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 pre-AIA the applicant regards as the invention.
Claim 1 recites “a toe region”. The specification nor drawings provide delineation as to what is considered a “toe region” and thus the metes and bounds of the claim are unclear.
Claim 1 recites “forming a cavity between the insole underside and the shoe sole of the shoe”. There is no shoe sole claimed. The claim is for an insole, not an insole and sole structure. It is therefore unclear how a cavity can be formed between the insole underside and an unclaimed component.
Claim 12 recites “the reinforcement means”. There is insufficient antecedent basis for this limitation in the claim. It is unclear if there is an omission of a previously recited element or if “the” should be changed to “a”.
Claim 12 recites “the reinforcement means is exchangeable and/or detachably attachable”. It is unclear if the reinforcement means are attached or secured to the insole, or whether this is an intended use recitation regarding the ability of reinforcement means to be exchangeable and/or detachably attachable. There is no relationship recited between the reinforcement means and the insole. The examiner is interpreting this as a recitation of intended use in that some reinforcement means may be exchanged or detached from the insole.
The dependent claims inherit(s) the deficiency by nature of dependency.
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 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) 1, 2, 4, 6-8, 12, and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li (US 20170258175) as evidenced by Wong (See PTO-892).
Regarding claim 1, Li describes an insole (insole 100), which has an insole underside (bottom surface 102) and an insole upper side (top surface 101), the insole underside
at least one hollow arched region (see annotated Fig. 1) with a hollow arch (105), forming a cavity (see annotated Fig. 1) between the insole underside and the shoe sole of the shoe, the cavity extending continuously from a medial side to a lateral side of the insole (see annotated Fig. 1, extends from a medial side to a lateral side)’
a first spring arm at a forefoot region and a second spring arm at the heel region, the first and second spring arm moveable in a contact plane during loading (see annotated Fig. 6)
and wherein the insole acts in the manner of a diaphragm spring designed as a single spring and is configured to compress under a load applied by the weight of a user an return to an initial position when the load is relieved (compresses and can return to its original shape, para. 0048, and thus is a “spring” inasmuch as claimed, furthermore, is formed of UHWMPE which has moderate flexibility an can return to its original shape after unloading, see Wong), the insole having a substantially constant thickness (is substantially constant thickness),
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Regarding claim 2, Li describes the insole according to claim 1, characterized in that the at least one hollow arched region is provided for supporting the longitudinal arch of the foot (is for arch support, see para. 0042).
Regarding claim 4, Li describes the insole according to claim 1, characterized in that the insole
Regarding claim 6, Li describes the insole according to claim 1, characterized in that at least one fastener (adhesive, para. 0044) is provided which is arranged to provide a detachable connection of the insole to the shoe into which the insole is placed (permits removability, para. 0044).
Regarding claim 7, Li describes the insole according to claim 6, characterized in that the fastener is provided in a front region in which a forefoot can rest against the insole upper side, in a middle region on a side facing away from the at least one hollow arched region and/or in a rear region in which a heel can rest against the insole upper side (describes as the bottom side, which includes each of the regions claims, para. 0044).
Regarding claim 8, Li describes the insole according to claim 6, characterized in that the fastener is at least partially incorporated into the insole and/or flush with the insole underside (is on the bottom side and is thus incorporated into the insole, para. 0044).
Regarding claim 12, Li describes the insole according to claim 1, characterized in that: the reinforcement means is exchangeable and/or detachably attachable (fully capable of accepting detachable reinforcement means).
Regarding claim 13, Li describes the insole according to claim 1, characterized in that the insole is formed from a plastic (UHMW-PE, para. 0049), in particular polyethylene, polypropylene, a natural raw material, for example wood or cork, and/or a material comprising lignin and/or hemp fibers.
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 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.
Claim 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li (US 20170258175) in view of Schickling (US 20200107612).
Regarding claim 9, Li describes the Insole according to claim 6, but does not explicitly describe that the
In related art for insoles, Schickling describes the use of a magnets 620 and 621 are utilized to secure the insole (see para. 0107).
It would have been obvious to a person having ordinary skill in the art prior to the time of filing the instant application to modify the mild adhesive with the magnet of Schickling as such a modification is a simple substitution of one known element for another with used to obtain predictable results. In this case, Schickling provides explicit support for the fact that adhesives, hook and loop, and magnets can be interchanged with predictable results (see para. 100, magnets, adhesives, hook and loop can be used).
Claim 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li (US 20170258175) in view of Mark (US 20160192741).
Regarding claim 11 Li describe the Insole according to claim 1, but does not explicitly describe that the at least one hollow arched region comprises a reinforcement means that is integrally molded to the insole and/or is molded into the insole.
In related art for inserts, Marks describes the at least one hollow arched region (varus wedge VW1) comprises a reinforcement means (fiber reinforcement, para. 0139) that is integrally molded to the insole (deposited into fill material to fuse fill material, abstract) and/or is molded into the insole.
It would have been obvious to a person having ordinary skill in the art prior to the time of filing the instant application to modify the material of Li to include the reinforcement means of Mark in order to provide additional support to the insole.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Neuner (US 20050223604) could be utilized as an anticipatory reference for many of the pending claims.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK J LYNCH whose telephone number is (571)272-1145. The examiner can normally be reached on M-Th, Alt F: 8:00 AM-5:00 PM ET.
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, Clint Ostrup can be reached on 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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/PATRICK J. LYNCH/Primary Examiner, Art Unit 3732