DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. The amendment filed by Applicant on July 13, 2026 has been fully considered. The amendment to instant claim 1 is acknowledged. Specifically, claim 1 has been amended to include a limitation of the shoe midsole being substantially free of a condensation catalyst or a residue thereof. This limitation was taken from claim 24, now cancelled. The previous rejection of claim 24 becomes the new rejection of the amended claim 1. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 102/103
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.
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.
3. Claims 1-6, 20-23, 25-28 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Gopalan (US 2020/0199349, Gopalan’349).
4. The rejection is adequately set forth on pages 3-7 of an Office action mailed on February 12, 2026 and is incorporated here by reference.
Claim Rejections - 35 USC § 103
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.
5. Claims 1-6, 20-23, 25-28 are rejected under 35 U.S.C. 103 as being unpatentable over Gopalan (US 2020/0199349, Gopalan’349) in view of Bambara et al (US 5,883,144).
6. The rejection is adequately set forth on pages 8-11 of an Office action mailed on February 12, 2026 and is incorporated here by reference.
7. Claims 1-23, 25-28 are rejected under 35 U.S.C. 103 as being unpatentable over Gopalan et al (US 2019/0029361, Gopalan’361) in view of Bambara et al (US 5,883,144).
8. The rejection is adequately set forth on pages 11-18 of an Office action mailed on February 12, 2026 and is incorporated here by reference.
9. Claims 1-23, 25-28 are rejected under 35 U.S.C. 103 as being unpatentable over Gopalan (US 2020/0199349, Gopalan’349) in view of Bambara et al (US 5,883,144), in further view of Gopalan et al (US 2019/0029361, Gopalan’361).
10. The rejection is adequately set forth on pages 18-23 of an Office action mailed on February 12, 2026 and is incorporated here by reference.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
11. Claims 1-23, 25-28 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-33 of a copending application 18/028,918 (published US 2023/0363490).
12. The rejection is adequately set forth on pages 24-28 of an Office action mailed on February 12, 2026 and is incorporated here by reference.
13. Since no Terminal Disclaimer has been filed, the rejection is maintained.
Response to Arguments
14. Applicant's arguments filed on July 13, 2026 have been fully considered.
15. With respect to Applicant’s arguments regarding the rejections of Claims 1-6, 20-23, 25-28 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Gopalan (US 2020/0199349, Gopalan’349); Claims 1-6, 20-23, 25-28 under 35 U.S.C. 103 as being unpatentable over Gopalan (US 2020/0199349, Gopalan’349) in view of Bambara et al (US 5,883,144), Claims 1-23, 25-28 under 35 U.S.C. 103 as being unpatentable over Gopalan et al (US 2019/0029361, Gopalan’361) in view of Bambara et al (US 5,883,144) and Claims 1-23, 25-28 under 35 U.S.C. 103 as being unpatentable over Gopalan (US 2020/0199349, Gopalan’349) in view of Bambara et al (US 5,883,144), in further view of Gopalan et al (US 2019/0029361, Gopalan’361), it is noted that:
1) Though Gopalan’349 teaches that the condensation catalyst maybe (i.e. may or may not be) present in the composition to facilitate both the hydrolysis and subsequent condensation of the silane grafts on the silane-grafted polyolefin elastomer to form crosslinks ([0075]), said condensation catalyst is present in amount of about 0.01%wt, or 0.25-8%wt ([0076]), based on the weight of the blend composition ([0075]). Since the term “about 0.01%wt” includes values of less than 0.01%wt, i.e. extremely low, i.e. essentially close to zero, amounts, therefore, the shoe sole of Gopalan’349 will intrinsically and necessarily be, or would be reasonably expected to be “substantially” free of silane crosslinking and “substantially” free of water as well.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
2) It is noted that instant claim 1 recites the midsole being substantially free of a condensation catalyst or a residue thereof.
Instant specification defines the term “substantially” as follows (see [0039] of instant specification):
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That is, given the term “free” is zero percent, the value of the amount of the condensation catalyst, water and silane cross-linking of the peroxide-crosslinked polyolefin elastomer will be 0 + 10%, in other words by using the terms “substantially free”, instant claim 1 allows the presence of as high as 10%wt of the condensation catalyst, as high as 10%wt of water and as high as 10% of silane cross-linking of the peroxide-crosslinked polyolefin elastomer.
3) Even assuming that the condensation catalyst is present in amount of 0.01-1%wt, or 0.25-8%wt in the midsole of Gopalan’349 ([0075]-[0076]), these amounts are well within the ranges allowed by the term “substantially free” as defined by instant specification.
4) Gopalan’349 teaches the composition comprising silane-grafted olefin copolymers, polyolefin elastomers and further peroxide ([0041]); in paragraphs [0072]-[0074] explicitly teaches the cross-linker being a peroxide.
Therefore, given the crosslinking system used in the composition of Gopalan’349 includes peroxide and as low as 0.1%wt, or 1%wt of condensation catalyst (as in Example 21 of Gopalan’349), said composition will intrinsically and necessarily have, at least in a minor amount, peroxide-crosslinked polyolefin elastomers (as cited in [0072]) and further have 1%wt or less of the condensation catalyst, i.e. within the “substantially free” range, and 10% or less (i.e. within “substantially free” range) of silane-crosslinking present in said peroxide cross-linked polyolefin elastomer. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
5) Bambara et al is a secondary reference, which was applied for the teachings that cross-linking of polyolefins with silane-grafted polyolefins can alternatively be by peroxide, or by condensation in the presence of moisture, or both.
Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
6) Similarly to the teachings of Gopalan’349, Gopalan’361 discloses the use of as low as about 0.01%wt to 1%wt ([0072]) of a condensation catalyst and silane crosslinker in amount of greater than zero, including about 0.5%wt ([0070]), all values of which are within the range of +10% as defined in instant specification by the term “substantially free”.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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