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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/20/2025 has been entered.
Claims 1-2, 12-13, 16-17, 19, 21, 26-27, 30, and 33 have been amended, claims 11 and 25 have been canceled, claims 35-36 have been added, claims 1-10, 12-13, 16-17, 19, 21-24, 26-27, 30 and 33-36 remain pending, and claim 34 is withdrawn from consideration in this application.
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 (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 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) 1-3, 7, 8, 16, 21, 30, 35, and 36 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Madinger (US 1,992,081).
Regarding claim 1, Madinger discloses an orthotic insole comprising: an insole body receivable in a footwear, the insole body having a front body end, a rear body end opposite the front body end, a top body surface for receiving a user's foot and a bottom surface configured to be received on an insole of the footwear (Fig. 1, 2), the insole body further including a front body edge (front edge at 21, 22) located at the front body end, the top
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Regarding claim 2, Madinger discloses that the plurality of surface portions includes a heel portion extending forwardly from the rear body end to receive a heel of a user thereon, the heel portion having a rear end located at the rear body end and a front end, the heel portion extending along a heel portion plane (Fig. 2).
Regarding claim 3, Madinger discloses that the plurality of surface portions further includes a calcaneal inclination portion extending forwardly from the heel portion, the calcaneal inclination portion having a rear end located at the front end of the heel portion and a front end, the calcaneal inclination portion extending forwardly and upwardly from the heel portion (Fig. 2).
Regarding claim 7, Madinger discloses that the plurality of surface portions further includes a midfoot portion extending forwardly from the calcaneal inclination portion, the midfoot portion having a rear end located at the front end of the calcaneal inclination portion and a front end (Fig. 2).
Regarding claim 8, Madinger discloses that the plurality of surface portions further includes a metatarsal portion extending forwardly from the midfoot portion, the metatarsal portion having a rear end located at the front end of the midfoot portion and a front end, the metatarsal portion extending downwardly from the rear end to the front end thereof (Fig. 2).
Regarding claim 16, Madinger discloses that the front body edge is substantially linear and is angled relative to a central longitudinal body axis of the insole body (Fig. 1).
Regarding claim 21, Madinger discloses an orthotic insole comprising: an insole body receivable in a footwear, the insole body extending between front and rear body ends and along a central longitudinal body axis, the insole body further including a top body surface for receiving a user's foot and a bottom body surface configured to be received on an insole of the footwear (Fig. 1, 2), the insole body further including a front body edge (front edge at 21, 22) located at the front body end, the top
Regarding claim 30, Madinger discloses that the front body edge is substantially linear and is angled relative to a central longitudinal body axis of the insole body (Fig. 1).
Regarding claims 35 and 36, Madinger discloses that the tongue member is sized and shaped to allow at least one of the head of the first metatarsal bone of the user's foot and the head of the fifth metatarsal bone of the user's foot to contact the insole of the footwear when the insole body is received in the footwear and the user's foot is received on the insole body (Fig. 1).
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) 1-10, 16-17, 21-24, 30, and 35-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hanft (US 9,750,302) in view of Madinger (US 1,992,081).
Regarding claim 1, Hanft discloses an orthotic insole comprising: an insole body (21) receivable in a footwear, the insole body having a front body end (45), a rear body end opposite the front body end, a top body surface (51) for receiving a user's foot and a bottom surface configured to be received on an insole of the footwear (Fig. 1, 2), the insole body further including a front body edge located at the front body end, the top
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Hanft does not disclose a tongue member extending forwardly from the front body edge of the insole body, the tongue member extending along only a portion of an entire width of the front body edge in the widthwise direction. Madinger teaches an orthotic insole including a front body edge (front edge at 21, 22) located at the front body end; and a tongue member (front portions between cutouts 21, 22) extending forwardly from the front body edge of the insole body, the tongue member extending along only a portion of an entire width of the front body edge in the widthwise direction (column 2, lines 35-43; Fig. 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide cutout portions, as taught by Madinger, such that a tongue member is formed, in order to allow the first and fifth metatarsal heads to drop, helping to distribute weight equally over parts of the foot.
Regarding claim 2, Hanft discloses that the plurality of surface portions includes a heel portion extending forwardly from the rear body end to receive a heel of a user thereon, the heel portion having a rear end located at the rear body end and a front end, the heel portion extending along a heel portion plane (Fig. 5).
Regarding claim 3, Hanft discloses that the plurality of surface portions further includes a calcaneal inclination portion extending forwardly from the heel portion, the calcaneal inclination portion having a rear end located at the front end of the heel portion and a front end, the calcaneal inclination portion extending forwardly and upwardly from the heel portion (Fig. 1; column 5, lines 17-23).
Regarding claim 4, Hanft discloses that the calcaneal inclination portion extends along a calcaneal inclination portion plane, the calcaneal inclination portion plane being angled upwardly relative to the heel portion plane (Fig. 1; column 5, lines 17-23).
Regarding claims 5 and 6, Hanft does not disclose the specific angle between the calcaneal inclination portion and the heel portion, but appears to show an angle between about 3 degrees and 7 degrees, or about 5 degrees (Fig. 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the angle between the calcaneal inclination portion and the heel portion between about 3 degrees and 7 degrees, or about 5 degrees, in order to reduce forward inclination force of the foot towards the toe and provide a comfortable rest for the heel. The claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 7, Hanft discloses that the plurality of surface portions further includes a midfoot portion extending forwardly from the calcaneal inclination portion, the midfoot portion having a rear end located at the front end of the calcaneal inclination portion and a front end (Fig. 5).
Regarding claim 8, Hanft discloses that the plurality of surface portions further includes a metatarsal portion extending forwardly from the midfoot portion, the metatarsal portion having a rear end located at the front end of the midfoot portion and a front end, the metatarsal portion extending downwardly from the rear end to the front end thereof (Fig. 5).
Regarding claims 9 and 10, Hanft does not disclose the specific angle between the metatarsal portion and heel portion, but appears to show an angle between about 9 degrees and 19 degrees, or about 13.5 degrees (Fig. 5). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the angle between the metatarsal portion and heel portion between about 9 degrees and 19 degrees, or about 13.5 degrees, in order to provide an insole which works within a high heel shoe. The claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 16, Madinger teaches that the front body edge is substantially linear and is angled relative to a central longitudinal body axis of the insole body (Fig. 1).
Regarding claim 17, Madinger appears to show an angle of the front insole edge between about 70 degrees and 90 degrees, but does not disclose the specific angle. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the front insole edge angled at an angle of between about 70 degrees and 90 degrees in order to provide a front edge which extends along the metatarsophalangeal joints. The claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 21, Hanft discloses an orthotic insole comprising: an insole body (21) receivable in a footwear, the insole body extending between front and rear body ends and along a central longitudinal body axis, the insole body further including a top body surface (51) for receiving a user's foot and a bottom body surface configured to be received on an insole of the footwear, the insole body further including a front body edge (45) located at the front body end, the top
Hanft does not disclose a tongue member extending forwardly from the front body edge of the insole body, the tongue member extending along only a portion of an entire width of the front body edge in the widthwise direction. Madinger teaches an orthotic insole including a front body edge (front edge at 21, 22) located at the front body end; and a tongue member (front portions between cutouts 21, 22) extending forwardly from the front body edge of the insole body, the tongue member extending along only a portion of an entire width of the front body edge in the widthwise direction (column 2, lines 35-43; Fig. 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide cutout portions, as taught by Madinger, such that a tongue member is formed, in order to allow the first and fifth metatarsal heads to drop, helping to distribute weight equally over parts of the foot.
Regarding claims 22 and 23, Hanft does not disclose the specific angle between the calcaneal inclination portion and the heel portion, but appears to show an angle between about 3 degrees and 7 degrees, or about 5 degrees (Fig. 5). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the angle between the calcaneal inclination portion and the heel portion between about 3 degrees and 7 degrees, or about 5 degrees, in order to reduce forward inclination force of the foot towards the toe and provide a comfortable rest for the heel. The claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 24, Hanft does not disclose the specific angle between the metatarsal portion and heel portion, but appears to show an angle between about 9 degrees and 19 degrees, or about 13.5 degrees (Fig. 5). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the angle between the metatarsal portion and heel portion between about 9 degrees and 19 degrees, or about 13.5 degrees, in order to provide an insole which works within a high heel shoe. The claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 30, Madinger teaches that the front body edge is substantially linear and is angled relative to a central longitudinal body axis of the insole body (Fig. 1).
Regarding claims 35 and 36, Madinger teaches that the tongue member is sized and shaped to allow at least one of the head of the first metatarsal bone of the user's foot and the head of the fifth metatarsal bone of the user's foot to contact the insole of the footwear when the insole body is received in the footwear and the user's foot is received on the insole body (Fig. 1).
Claim(s) 12, 13, 26, and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hanft and Madinger, as applied to claims 1 and 21, further in view of Granger et al. (US 2018/0132565), herein Granger.
Regarding claims 12, 13, 26, and 27, Hanft discloses that the orthotic insole may include an arch (column 6, lines 3-6), but does not disclose the specific structure of the arch. Granger teaches an orthotic insole having an arch alignment member (119A) for receiving a user's foot arch, the arch alignment member extending upwardly from the top body surface and extending along an inner body edge of the insole body, supporting the midfoot arch and preventing and minimizing pronation conditions. The arch alignment member includes a plurality of slots (132) defined in the bottom arch member face, the slots extending parallel to each other and substantially parallel to the central longitudinal body axis. The slots provide additional rigidity to the arch support, improving support, and allow the arch area to collapse to fit the shoe (paragraph 0047, 0057, 0092; Fig. 1C). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide an arch alignment member with slots, as taught by Granger, to the orthotic insole of Hanft and Madinger in order to provide a rigid arch support which supports the midfoot arch of the foot and also allows the arch area to collapse to fit a shoe.
Claim(s) 19 and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hanft and Madinger, as applied to claims 1 and 21, further in view of Raspini (US 2008/0086909).
Regarding claims 19 and 33, Hanft discloses that the orthotic insole may include depressions and other shaped features (column 6, lines 3-6), does not disclose a styloid receiving recess. Raspini teaches an insole including a styloid receiving recess (23) defined in the top insole surface, the styloid receiving recess being positioned, sized and shaped to receive a fifth metatarsal styloid of the user's foot. The styloid receiving recess facilitates movement of the foot and reduces tension in periods of compression, and optimizes the physiology of a walking stride (paragraph 0056; Fig. 1, 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a styloid receiving recess, as taught by Raspini, to the orthotic insole Hanft and Madinger, in order to facilitate movement of the foot and reduce tension in periods of compression, and optimize the physiology of a walking stride.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-10, 12-13, 16-17, 19, 21-24, 26-27, 30 and 33-36 have been 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARON M PRANGE whose telephone number is (571)270-5280. The examiner can normally be reached M-F 8:30-5 EST.
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/SHARON M PRANGE/ Primary Examiner, Art Unit 3732