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 .
Response to Amendment
The amendments filed with the written response received on March 6, 2026 have been considered and an action on the merits follows. As directed by the amendment, claims 1, 6, 12 and 57 have been amended; claims 2-5, 7, 8, 11 and 13-56 are canceled; claims 12 and 57 are withdrawn from further consideration; and claim 58 has been added. Accordingly, claims 1, 6, 9, 10, 12, 57 and 58 are pending in this application, with an action on the merits to follow regarding claims 1, 6, 9, 10 and 58.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “paper” (claim 58) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: claim 1 has been amended to recite “wherein the training element includes an insole and an elastic slipcover over the insole that embraces edges of the insole and located freely on a hard surface of the insole to slide together with the foot” (emphasis added). On Page 8, the Specification recites the following, which appears to be the text that corresponds the most to this new claim language:
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Nowhere in the Specification is the word “slipcover” recited, nor is the phrase “embraces edges of the insole”, nor is the phrase “located freely on a hard surface of the insole”.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, lines 11-12: the phrase “and adapted” should be added before “to slide together”
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 (and claims 6, 9, 10 and 58 at least due to dependency from claim 1) 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, Applicant recites “a flat sole with a fastening to a wearer’s foot”. The term “a fastening” is confusing because it can be considered a type of noun, as well as a verb. Is this language intended to mean that the flat sole is merely being fastened to a wearer’s foot, or is “fastening” a noun? Correction is required. For purposes of examination, the language is being interpreted as meaning the same as “a flat sole configured to be fastened to a wearer’s foot”, as best as can be understood.
Regarding claim 9, Applicant recites “wherein the training element is configured in the form of a flat insole with a thickness of 5 to 60 mm” which appears to be positively reciting a flat insole. In claim 1, from which claim 9 depends, Applicant already positively recites that the training element includes an insole. Is there an additional insole as part of the training element (i.e. there is an insole and a flat insole?) or is claim 9 merely intended to define the existing insole as being flat? Correction is required. For purposes of examination, claim 9 is being interpreted as meaning the same as “wherein the insole is flat with a thickness of 5 to 60 mm”.
Regarding claim 10, Applicant recites “wherein the training element is configured in the form of a flat insole having a smooth outer surface providing for the foot sliding over a smooth surface” which appears to be positively reciting a flat insole. In claim 1, from which claim 10 depends, Applicant already positively recites that the training element includes an insole. Is there an additional insole as part of the training element (i.e. there is an insole and a flat insole?) or is claim 10 merely intended to define the existing insole as being flat? Also, are “a smooth outer surface” and “a smooth surface” (i.e. both are being positively recited in this language) the same surface? Correction is required. For purposes of examination, claim 9 is being interpreted as meaning the same as “wherein the insole is flat and has a smooth outer surface providing for the foot sliding over the smooth outer surface”, as best as can be understood.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 1 (and claims 6, 9, 10 and 58 at least due to dependency from claim 1) is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter for the reason(s) below:
Regarding claim 1, Applicant appears to claim parts of the human body, which is not directed to statutory subject matter (i.e. human per se). For example, the claim recites “a flat sole with a fastening to a wearer's foot”, which is actively reciting structure in relation to a user/person, rather than reciting that the structure is configured/adapted to be used in such a manner (see the 35 U.S.C. 112(b) rejection of claim 1 above, which explains the ambiguity as to whether “fastening” is a noun). Correction is required. For purposes of examination, the claim will be interpreted as “a flat sole configured to be fastened to a wearer's foot” as best as can be understood.
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 (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 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, 6 and 10, as best as can be understood, are rejected under 35 U.S.C. 103 as being unpatentable over Marion (US 2007/0214680) in view of Harris (USPN 4,813,162) and Rondini (USPN 5,052,131).
Regarding independent claim 1, Marion discloses an article of footwear (shoe #60; Fig. 6) for strengthening foot and lower leg muscles and for developing overall body coordination (the shoe is capable of performing this function, inasmuch as the structure recited in the claim has been defined to provide an nexus with said function; Marion discusses that orthotics can be used in the shoe throughout the disclosure; Examiner notes the emphasized/italicized language is a statement of intended use that does not further structurally define the claimed invention in any patentably-distinguishing sense), the article of footwear comprising; a sole with a fastening to a wearer's foot (see Fig. 6, which shows a sole that is configured to be fastened to a foot of a wearer, as best as this limitation can be understood), and a replaceable training element secured on a sole upper layer (see Figs. 3-5, which show the combination of an insole/orthotic #28 with a cover #40; Fig. 6 shows the device secured onto a sole upper layer; the device is capable of being removed from the sole, since there is no permanent connection between the device and the shoe’s sole), wherein the training element includes an insole (#28) and an elastic slipcover (cover #40; ¶ 0021 of Marion discloses that the cover can be made of spandex, with an elastic band periphery #50 defining a bottom side aperture #48 to be wrapped over the insole/orthotic #28 and around its peripheral edges (see Fig. 4, bottom view)) over the insole that embraces edges of the insole and located freely on a hard surface of the insole to slide together with the foot (see Fig. 4, which shows the cover embraced around the peripheral edges of the insole/orthotic #28; the top surface of insole/orthotic #28 has at least some degree of hardness; the cover is not rigidly attached to the insole/orthotic #28 when installed thereon (i.e. located freely), so it is at least capable of sliding to some extent against the surface). Marion is silent to the sole being flat, and silent to the training element being secured onto the sole upper layer via a spike connection, or snap fasteners, or an adhesive layer, or a textile fastener.
Harris teaches a shoe with a sleeve-covered orthotic insert as a device, wherein the device is attachable to the top surface of the shoe’s sole via mateable fasteners #76, #78, such as hook-and-loop fasteners (Col. 4, Lines 10-19 of Harris; i.e. hook-and-loop is a type of textile fastener, inasmuch as the textile fastener has been structurally defined in the claim).
Rondini teaches an open-toed footwear article that has a sole that is flat (see Figs. 3 and 11 of Rondini).
Marion, Harris and Rondini all teach analogous inventions in the field of footwear with sole components. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have used the flat sole design, such as the one taught by Rondini, as the sole shape of choice for the sole of Marion’s footwear, in order to provide an alternative, known sole shape that can hold a user’s foot thereon. It would have been further obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have incorporated the hook-and-loop fastener components taught by Harris in between the orthotic/insole #28 and cover #40 pairing of Marion and the sole of Marion in order to stabilize the position of the device on the sole of the shoe, when the device is installed on the shoe, to prevent movement of the device during use. As a result of the modifications, the sole would be flat (via the teachings of Rondini incorporated into Marion’s footwear), and the training element (i.e. combination of insole/orthotic #28 with cover #40) would being secured onto the sole upper layer via a spike connection, or snap fasteners, or an adhesive layer, or a textile fastener (via the teachings of Harris incorporated into Marion’s footwear).
Regarding claim 6, the modified footwear article of Marion (i.e. Marion in view of Harris and Rondini, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that the article of footwear is designed for wearing on either a right foot or a left foot of the wearer (absent further distinguishing structural language in the claim, a user would at least be capable of wearing the open-toed footwear of Marion on either a left foot or a right foot, since the toe strap extends over all toes, with no such smaller toe loop for a big toe shown in Fig. 6 of Marion that would render the footwear for a specific foot).
Regarding claim 10, the modified footwear article of Marion (i.e. Marion in view of Harris and Rondini, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that the training element is configured in the form of a flat insole having a smooth outer surface providing for the foot sliding over a smooth surface (see Fig. 3 of Marion, which shows a surface that has at least some degree of smoothness, inasmuch as the smoothness has been structurally defined in the claim).
Claim 9, as best as can be understood, is rejected under 35 U.S.C. 103 as being unpatentable over Marion in view of Harris and Rondini as applied to claim 1 above, and further in view of Mulholland (US 2018/0235309).
Regarding claim 9, the modified footwear article of Marion (i.e. Marion in view of Harris and Rondini, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that the training element is configured in the form of a flat insole, but is silent to it having a thickness of 5 to 60 mm.
Mulholland discloses footwear with an insole #10 that can have a uniform thickness, which can be 7.0 mm thick (¶ 0038 of Mulholland).
Modified Marion and Mulholland teach analogous inventions in the field of insoles. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have made the insole/orthotic of Marion to be 7.0 mm thick, as taught by Mulholland, in order to keep the profile of the device thin and reduce the weight thereof for the user when wearing the shoe, and further since 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. See MPEP 2144.05(II)(A). As a result of the modification, the flat insole #28 would be 7.0 mm thick, which is within the claimed range of 5-60 mm.
Claim 58, as best as can be understood, is rejected under 35 U.S.C. 103 as being unpatentable over Marion in view of Harris and Rondini, as applied to claim 1 above, and further in view of Nathan (USPN 873,775).
Regarding claim 58, the modified footwear article of Marion (i.e. Marion in view of Harris and Rondini, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, but is silent to the insole being provided with a smooth sliding surface from paper glued to the insole, the smooth sliding surface configured to improve sliding the elastic slipcover along the insole.
Nathan teaches an insole with an uppermost layer #12 formed of a material of soft, smooth character, naming paper as an example (Page 1, Lines 58-62 of Nathan).
Modified Marion and Nathan teach analogous inventions in the field of insoles. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have added a top layer of smooth paper, as taught by Nathan, to the upper surface of the insole #28 of Marion in order to further smoothen the insole, since Nathan teaches that the paper provides for a smooth character. While Nathan is silent as to how its paper is attached to the remainder of the insole, it would have been further obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have glued the paper onto the insole’s upper surface, since the concept of gluing paper onto substrate articles is very well-known.
Response to Arguments
In view of Applicant's amendment, the search has been updated, and new prior art has been identified and applied. Applicant's arguments have been considered but are moot in view of the new ground(s) of rejection.
Conclusion
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 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 JAMESON COLLIER whose telephone number is (571)270-5221. The examiner can normally be reached Monday - Friday 8 am - 5 pm.
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/JAMESON D COLLIER/Primary Examiner, Art Unit 3732
