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 .
Withdrawn Rejections
Any rejections and or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn due to Applicant’s amendments and/or arguments in the response dated September 11, 2025. However, new rejections may have been made using the same prior art if still applicable to the newly presented amendments and/or arguments.
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.
Claims 1 – 4, 6, 8, 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Cain et al. (WO 2018/140307 A2) in view of Magdaleno et al. (USPN 9,456,660) and Oakley (USPN 4,864,740).
Cain et al. disclose a fragrant footwear liner (Figures; Abstract; Paragraphs 0090 – 0098) comprising: a footwear liner having an elastomeric layer permanently attached to an adhesive layer (Paragraphs 0006, 0036 – 0041, and 0043); wherein said adhesive layer having a removable protective film layer (Paragraphs 0006 and 0043); wherein said elastomeric layer overlaps said adhesive layer (Paragraphs 0006, and 0036 – 0041); wherein said adhesive layer is securable to an inside bottom portion of a footwear after removing the removable protective film layer (Paragraphs 0043, 0050, 0053 – 0089); and further wherein said footwear liner covering a majority of an area of said inside bottom portion of the footwear (Figures) as in claim 1. With respect to claim 2, said adhesive layer selected from a group consisting of a polyurethane and a butadiene (Paragraphs 0053 – 0089). Regarding claim 6, said elastomeric layer having a non-woven arrangement to absorb moisture and sweat from a foot of the wearer (Paragraphs 0039 – 0040). For claim 8, said footwear liner is disposable (Paragraph 0001). In claim 10, said elastomeric layer having a heel end and a front end extending between a longitudinal portion (Paragraphs 0006, 0036 – 0041, and 0043). With regard to claim 11, said elastomeric layer having an anti-microbial coating (Paragraph 0097). However, Cain et al. fail to disclose said elastomeric layer is infused with a lavender scent for emitting an odor when compressed by a weight of a wearer of said footwear liner; said adhesive layer is selected from a group consisting of a castor oil-based polyurethane adhesive, said adhesive layer having a peel strength from about 1 g/25 mm to about 5 g/25mm, said elastomeric layer having a coefficient of friction from about 0.4µ to about 0.5µ, and said heel end is about 40% thicker than said front end.
Magdaleno et al. teach a fragrant footwear liner (Figures; Abstract) comprising: a footwear liner having an elastomeric layer (Column 1, line 64 to Column 2, line 6); said footwear liner covering a majority of an area of said inside bottom portion of the footwear (Figures)said elastomeric layer having essential oils for emitting an odor when compressed by a weight of a wearer of said footwear liner (Column 2, lines 7 – 24); said elastomeric layer is infused with said essential oils, and said essential oils selected from a group consisting of a lavender, a lemon, a wood, a mint, a jasmine and a rose (Column 2, lines 7 – 24, wherein the essential oil may be any desired smell) for the purpose of transferring a pleasant scent to the foot in order to mask an odor (Column 1, lines 8 – 11).
Oakley teaches a fragrant footwear liner (Figures; Abstract; Column 3, lines 4 – 7) comprising a footwear liner having an elastomeric layer (Column 3, line 21 to Column 4, line 5), wherein said elastomeric layer has a coefficient of friction that may be varied (Column 3, lines 21 – 60) for the purpose of controlling the movement of the insole with regard to other surfaces (Column 3, lines 21 – 60). Although Oakley does not explicitly teach the limitations said elastomeric layer having a coefficient of friction from about 0.4µ to about 0.5µ, it is reasonable to presume that said limitations are inherent to the invention. Support for said presumption is found in the use of similar materials (i.e. elastomeric layers has part of a shoe insert) used to produce the shoe liner. The burden is upon the Applicant to prove otherwise. MPEP 2112.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have an essential oil in the fragrant footwear liner and said elastomeric layer having a coefficient of friction from about 0.4µ to about 0.5µ of Cain et al. in order to transfer a pleasant scent to the foot in order to mask an odor as taught by Magdaleno et al. and to control the movement of the insole with regard to other surfaces as taught by Oakley.
With regard to the limitation of “said adhesive layer is selected from a group consisting of a castor oil-based polyurethane adhesive” and “said adhesive layer having a peel strength from about 1 g/25 mm to about 5 g/25mm”, Cain et al. clearly discloses that a variety of materials may be used for the adhesive layer (Paragraphs 0053 – 0089) and the strength of the adhesive may be determined by the area coated (Paragraph 0050). Applicant has provided no unexpected results due to the choice of the adhesive. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the desired adhesive, since it has been held to be within the general skill of a worker for its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07
With regard to “said heel end is about 40% thicker than said front end”, it is well settled that a particular shape of a prior invention carries no patentable weight unless the applicant can demonstrate that the new shape provides significant unforeseen improvements to the invention. In the instant case, the application does not indicate any new, significant attributes of the invention due to its shape which would have been unforeseen to one of ordinary skill in the art. A change in size or shape is generally recognized as being within the level of ordinary skill in the art, absent unexpected results. MPEP 2144.04 (I) and (IV).
Claims 12, 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Cain et al. (WO 2018/140307 A2) in view of Magdaleno et al. (USPN 9,456,660), Oakley (USPN 4,864,740), and Tadin (USPGPub 2004/0194344 A1).
Cain et al. further disclose a fragrant footwear liner (Figures; Abstract; Paragraphs 0090 – 0098) comprising: a footwear liner having an elastomeric layer permanently attached to an adhesive layer (Paragraphs 0006, 0036 – 0041, and 0043); wherein said adhesive layer having a removable protective film layer (Paragraphs 0006 and 0043); wherein said elastomeric layer overlaps said adhesive layer (Paragraphs 0006, and 0036 – 0041); wherein said adhesive layer is securable to an inside bottom portion of a footwear after removing the removable protective film layer (Paragraphs 0043, 0050, 0053 – 0089); wherein said footwear liner covering a majority of an area of said inside bottom portion of the footwear (Figures; Abstract); wherein said elastomeric layer having a non-woven arrangement to absorb moisture and sweat from a foot of the wearer (Paragraphs 0039 – 0040); and further wherein said footwear liner is disposable (Paragraph 0001) as in claim 12. In claim 15, said elastomeric layer having a heel end and a front end extending between a longitudinal portion (Paragraphs 0006, 0036 – 0041, and 0043). With regard to claim 16, said elastomeric layer having an anti-microbial coating (Paragraph 0097). However, Cain et al. fail to disclose said elastomeric layer having essential oils for emitting an odor when compressed by a weight of a wearer of said footwear liner, said elastomeric layer is infused with said essential oils, said essential oils selected from a group consisting of a wood, a mint, a jasmine and a rose, wherein said fragrant footwear liner comprises a slit and a cut-out at a front end of said fragrant footwear liner and a pair of opposing slits and a pair of opposing cut-outs at a heel end of said fragrant footwear liner, said elastomeric layer having a coefficient of friction from about 0.4µ to about 0.5µ, and said heel end is about 40% thicker than said front end.
Magdaleno et al. teach a fragrant footwear liner (Figures; Abstract) comprising: a footwear liner having an elastomeric layer (Column 1, line 64 to Column 2, line 6); said footwear liner covering a majority of an area of said inside bottom portion of the footwear (Figures)said elastomeric layer having essential oils for emitting an odor when compressed by a weight of a wearer of said footwear liner (Column 2, lines 7 – 24); said elastomeric layer is infused with said essential oils, and said essential oils selected from a group consisting of a lavender, a lemon, a wood, a mint, a jasmine and a rose (Column 2, lines 7 – 24, wherein the essential oil may be any desired smell) for the purpose of transferring a pleasant scent to the foot in order to mask an odor (Column 1, lines 8 – 11).
Oakley teaches a fragrant footwear liner (Figures; Abstract; Column 3, lines 4 – 7) comprising a footwear liner having an elastomeric layer (Column 3, line 21 to Column 4, line 5), wherein said elastomeric layer has a coefficient of friction that may be varied (Column 3, lines 21 – 60) for the purpose of controlling the movement of the insole with regard to other surfaces (Column 3, lines 21 – 60). Although Oakley does not explicitly teach the limitations said elastomeric layer having a coefficient of friction from about 0.4µ to about 0.5µ, it is reasonable to presume that said limitations are inherent to the invention. Support for said presumption is found in the use of similar materials (i.e. elastomeric layers has part of a shoe insert) used to produce the shoe liner. The burden is upon the Applicant to prove otherwise. MPEP 2112.
Tadin teaches a footwear liner (Figures; Abstract) wherein said footwear liner comprises a slit and a cut-out at a front end of said footwear liner (Figure 15, #325; Figure 23, #484; Figure 28, #678; Figure 37, #1140; Paragraphs 0084, 0098, 0112, and 0150) and a pair of opposing slits and a pair of opposing cut-outs at a heel end of said footwear liner (Figure 15, #325; Figure 23, #484; Figure 28, #678; Figure 37, #1140; Paragraphs 0084, 0098, 0112, and 0150) for the purpose of modifying the strength of the insole (Paragraph 0084) and preventing cracking of the insole (Paragraph 0098).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have an essential oil in the fragrant footwear liner, said elastomeric layer having a coefficient of friction from about 0.4µ to about 0.5µ, said footwear liner comprises a slit and a cut-out at a front end of said footwear liner and a pair of opposing slits and a pair of opposing cut-outs at a heel end of said footwear liner of Cain et al. in order to transfer a pleasant scent to the foot in order to mask an odor as taught by Magdaleno et al., to control the movement of the insole with regard to other surfaces as taught by Oakley, and to modify the strength of the insole and prevent cracking of the insole as taught by Tadin.
With regard to “said heel end is about 40% thicker than said front end”, it is well settled that a particular shape of a prior invention carries no patentable weight unless the applicant can demonstrate that the new shape provides significant unforeseen improvements to the invention. In the instant case, the application does not indicate any new, significant attributes of the invention due to its shape which would have been unforeseen to one of ordinary skill in the art. A change in size or shape is generally recognized as being within the level of ordinary skill in the art, absent unexpected results. MPEP 2144.04 (I) and (IV).
Response to Arguments
Applicant’s arguments with respect to claims 1 – 4, 6, 8, 10 – 12, 15 and 16 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.
In response to Applicant’s argument that “Claim 1 now requires a lavender scent infusion. Magdaleno teaches essential oils including lemon but only teaches chocolate as a non-essential oil scent. Magdaleno is silent as to lavender and to any infused scents other than chocolate. As such. Magdaleno does not teach or suggest a lavender scent elastomeric layer, as now required.”, the Examiner respectfully disagrees. Magdaleno clearly states “A covering 66 is mounted on completely covers the upper surface 14 of the panel 12. The covering 66 is impregnated with a scent. While the scent may include any scent determined to be pleasing to humans, in particular the scent may be selected from botanical essential oils derived from plants such as vanilla, citrus oils (such as lemon, orange and lime), strawberry, apple and cherry, though other scents and oils more akin to those used in colognes, perfumes and such may be utilized. Moreover, sweet smells such as chocolate and the like may be utilized as well.” (Column 2, lines 7 – 16). Magdaleno clearly states that the sent may be anything pleasing to a human and in particular may be botanical essential oils derived from plants. Lavender is a scent derived from plants that may be an essential oil. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have lavender as an essential oil in a footwear liner.
Conclusion
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/Patricia L. Nordmeyer/
Primary Examiner
Art Unit 1788
/pln/Primary Examiner, Art Unit 1788 September 23, 2025