DETAILED ACTION
Claims 1, 2, 4, 6-9, 11-13 and 15 are pending. Claims 1 and 12 are amended.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 1, 2026 has been entered.
Response to Amendment
This office action is responsive to the amendment filed on April 1, 2026. As directed by the amendment: claims 1 and 12 have been amended and claim 15 has been added. Thus, claims 1, 2, 4, 6-9, 11-13 and 15 are presently pending in this application.
Applicant’s amendment to the specification has overcome the specification objections.
Applicant’s amendment to the claims has overcome the 35 USC §112(a) rejections and introduced others.
Applicant’s amendment to the claims has overcome the 35 USC §112(b) rejections and introduced others.
Applicant’s amendment to the claims has not overcome the 35 USC §102(a)(1) rejections.
Response to Arguments
Applicant's arguments filed May 1, 2026 have been fully considered but they are not persuasive.
Applicant argues that since Li includes a mild adhesive the spring arms would not move freely in a horizontal contact plane in response to loading. The Examiner respectfully disagrees. Initially, while Li does recite the bottom surface “may have some adhesive” Li also states that the bottom surface may be smooth (para. 0044). Furthermore, even if Li includes “mild adhesive” there is no indication that this adhesive would restrict the ability of the sole to spring in response to loading. However, in view of this argument the rejections of claims 6-8 have been update so that the fastener is a magnet, the same fastener as eventually claimed.
Next, Applicant argues that Li is in constant contact and will slowly conform to a user’s foot after multiple uses which is inconsistent with “spring” behavior. The Examiner disagrees. Li describes that the insole is flexible for comfort (para. 0042) and that “the arch is higher than that of a user such, such that a user wearing the insole of the present invention will compress the insole until an equilibrium is met. In some embodiments, the insole will return to its original shape” (para. 0048). These paragraphs indicates that the insole is flexible and resilient. The Examiner does not dispute that Li does not explicitly recite that the arms move horizontally, however, due to the same or similar materials utilized in Li as well as the same or similar structure as disclosed, it is inherent that Li will function as claimed. Applicant has not provided evidence to the contrary.
Claim Objections
Claim 15 is objected to because of the following informalities: The text of claim 15 is underlined however “any claimed added by amendment must be indicated as “new” and the text of the claim must not be underlined”. MPEP 714(II)(C)(B). 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.
Claim 15 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 15 recites “an insole consisting of” , “a fastener disposed on the insole underside, the fastener comprising flexible magnetic ribs”, “the insole having a substantially constant thickness”. While the specification recites that the insole has a substantially constant thickness (para. 0016, 0050), this thickness is only referring to the insole without a separate reinforcement device or fastening device (Figs. 1A, 1B, 5A, 5B). Fig. 4 is the only figure that includes flexible magnetic ribs attached to the insole body, which locally increases the thickness of the insole. Thus, the specification lacks support for the insole having a substantially constant thickness while also including flexible magnetic ribs.
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 12 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 pre-AIA the applicant regards as the invention.
Claim 12 depends from itself. It is therefore unclear what the scope of the claim is supposed to be.
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, 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) 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 (see annotated Fig. 1);
and wherein the insole acts in the manner of a diaphragm spring designed as a single spring and is configured to compress under a perpendicular load applied by the weight of a user an return to an initial position when the perpendicular 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); and
wherein the perpendicular load causes the first and second spring arm to move in a horizontal contact plane (the insole of Li, formed of a plastic, specifically ultra-high molecular weight polyethylene, will behave in the same manner as the present application which specifically recites polyethylene as a suitable material in para. 0034, it is the position of the Office that the claimed resultant properties as desired in the aforesaid claims, would be inherent if not obvious to the composite of Li. It is reasonable to presume so, as support for said presumption is found in the use of like materials (i.e. same claimed shape and same material composition). The burden is upon Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594).
PNG
media_image1.png
414
508
media_image1.png
Greyscale
PNG
media_image2.png
593
807
media_image2.png
Greyscale
PNG
media_image3.png
219
585
media_image3.png
Greyscale
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 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.
Claims 6-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li (US 20170258175) in view of Schickling (US 20200107612).
Regarding claim 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).
However, Li does not explicitly describe that the spring arms would be displaceable in such a manner.
In related art, Schickling describes the use of magnetic sheet 1400 which correspond to a magnet pattern or sheet on the shoes (para. 0134).
In this modification Li now includes a magnetic sheet and thus would remain in place so as to not slide around, but would have the same structure as the present application and thus would function in the same manner absent persuasive evidence to the contrary.
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).
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, as modified is magnetic sheet).
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 9, Li describes the insole according to claim 6, the fastener comprises a multi-part magnetic fastening element (is a magnetic mesh which includes multiple parts because it includes warp and weft components).
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
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PATRICK J. LYNCH/Primary Examiner, Art Unit 3732
Prosecution Insights