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
Applicant's amendment filed on July 9, 2025 has been received. Claims 1-4 are currently pending.
Response to Arguments
Applicant’s arguments filed on July 9, 2025 regarding the amended claims have been fully considered, and an updated rejection has been provided below in light of Applicant’s claim amendments.
Any rejections and/or objections made in the previous Office Action and not repeated below, are hereby withdrawn due to Applicant’s amendments and/or arguments in the response filed on July 9, 2025.
Furthermore, Applicant’s arguments regarding Lo, Adair, and Smith have been fully considered but are not deemed to be persuasive.
First, Applicant argues that Lo teaches wherein both the left and right insoles have raised areas along the right side of the insole, which causes instability (see pages 6-7 of Applicant’s Remarks).
The Examiner respectfully disagrees, and notes that Applicant has not provided any evidence to support the allegation that Lo’s design would cause instability. In contrast, Lo discloses wherein the design of the insoles is such that “when the golfer swings the club, the golf shoes facilitate the shift of the center of gravity of the golfer and the motion of the reaction of the ground to make the stroke more strong and effortless and to reduce the risk of injury” (see paragraph 0021).
Furthermore, Lo has only been relied upon to reject claim 3, which recites a single insole. As such, Applicant’s arguments regarding the asymmetry between the left and right insoles is not relevant to the rejection of claim 3.
Second, Applicant argues that Lo “fails to talk about the thickness of big toe of each sole is smaller than the thickness of the little toe” (see page 8 of Applicant’s Remarks).
The Examiner respectfully disagrees. Lo clearly shows in the cross-sectional view of Fig. 3 (taken along line 3-3 of Fig. 1) that the insole has a smaller thickness along the medial side (corresponding to the big toe) and a greater thickness along the lateral side (corresponding to the little toe).
Lo also discusses in paragraph 0016 wherein the general thickness of the insole (including the big toe portion) is about 0.5cm to 2cm, while the thickness of the raised portion 13 (including the little toe portion) is about 1cm to 5cm, thereby including a configuration wherein the thickness of the big toe portion is at least 10mm smaller than the thickness of the little toe portion, e.g., 2cm/20mm for the big toe portion and 5cm/50mm for the little toe portion, as required by claim 3.
Third, Applicant argues that Adair “fails to talk about the thickness of little toe section is higher than the thickness of big toe section and heel section and also the front section and back section both have not same angle of inclination” (see pages 12-15 of Applicant’s Remarks).
The Examiner respectfully disagrees. Adair both depicts and discloses in see Figs. 5-7 and paragraphs 0171-0178 wherein a thickness/height of the big toe portion is essentially zero (i.e., “zero to a few millimeters”) and is smaller than both the thickness/height h2 of the little toe portion, and the thickness/height h1 of the medial and lateral heel portions – note that Adair discloses in paragraph 0176 wherein “the heel section 21 has a first dimension that is substantially uniform from the outer edge to the inner edge along a back edge of the apparatus” such that the thickness of the medial heel portion and the lateral heel portion are substantially the same.
The Examiner also respectfully notes that the limitation of the front and back sections having the same angle of inclination is recited only in claim 4, which Adair has not been relied upon to teach. Therefore, Applicant’s argument that Adair fails to teach this feature is not relevant to the rejection(s) actually applied to the claims.
Lastly, Applicant argues that Smith teaches an insole system that includes “a set of interchangeable wedges or posts with varying correction angles” that can be attached to attachment points of the insoles at the forefoot and rearfoot areas, and therefore “fails to talk about a fixed structure which helps to maintain the stability and make grip with ground during golf swing” (see pages 15-17 of Applicant’s Remarks).
The Examiner respectfully disagrees, and notes that the claims as currently presented do not require the insoles to be formed in a single piece, nor do the claims prohibit the insoles from being adjustable or including interchangeable attachments, as taught by Smith. The claims do not mention “a fixed structure,” as discussed by Applicant, nor do they recite functional limitations such as “maintaining stability” or “gripping the ground during a golf swing.”
Furthermore, regarding the intended use of the insoles for golf activities, as previously discussed on page 10 of the Non-Final Rejection, “Smith discloses a pair of insoles that are configured to be used for walking and running (see column 2, lines 42-49) and are therefore capable of being used for golf. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). See MPEP 2114 (II).”
See updated rejection(s) below.
Claim Rejections - 35 USC § 112
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.
Claims 1, 2, and 4 are 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.
Claims 1 and 2 recite the limitation “the thumb portion.” There is insufficient antecedent basis for this limitation in the claims. For purposes of examination, the Examiner will interpret the limitation as follows: “the big toe portion.”
Claim 4 recites the limitation “an angle of inclination from the lateral heel portion to the heel.” There is insufficient antecedent basis for the limitation “the heel” in the claims. Furthermore, it is unclear what portion of the heel is being referred to, and along what direction the recited angle of inclination is measured (i.e., from the lateral heel portion to where in the heel?) For purposes of examination, the Examiner will interpret the limitation as follows, in accordance with the suggested amendments provided on page 3 of the Non-Final Rejection: “an angle of inclination from the lateral heel portion to the medial heel portion.”
Dependent claims are rejected at least for depending from rejected claims.
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 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 3 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lo (US PG Pub 2018/0206595).
Regarding claim 3, Lo discloses an insole (right insole 10, see Fig. 1) comprising:
a big toe portion (see annotated Fig. 1; note that for purposes of clarity, only the right insole is shown in the annotated Fig.);
a little toe portion (see annotated Fig. 1);
a medial heel portion (see annotated Fig. 1); and
a lateral heel portion (see annotated Fig. 1);
wherein a thickness of the insole at a base of the big toe portion (thickness along medial portion of cross-section 3) is at least 10mm smaller than a thickness of the insole at a base of the little toe portion (thickness along lateral portion of cross-section 3; see Figs. 1 and 3 and paragraphs 0014-0016; Lo discloses wherein the thickness of the big toe portion is smaller than the thickness of the little toe portion; Lo also discloses wherein the thickness of the big toe portion is about 0.5cm to 2cm, while the thickness of the little toe portion is about 1cm to 5cm, thereby including a configuration wherein the thickness of the big toe portion is at least 10mm smaller than the thickness of the little toe portion, e.g., 2cm/20mm for the big toe portion and 5cm/50mm for the little toe portion).
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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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-2, as best as can be understood, are rejected under 35 U.S.C. 103 as being unpatentable over Adair.
Regarding claim 1, Adair discloses a golf insole (12, which can be used for a variety of athletic activities such as golf, see paragraph 0174), comprising:
a big toe portion (medial portion of toe section 25);
a little toe portion (lateral portion of toe section 25);
a medial heel portion (medial portion of heel section 21); and
a lateral heel portion (lateral portion of heel section 21; see at least Figs. 5-7 and paragraphs 0171-0178);
wherein a thickness of a base of the big toe portion is smaller than a thickness of each of the medial heel portion, the lateral heel portion, and a base of the little toe portion (see Figs. 5-7 and paragraphs 0171-0178; Adair both depicts and discloses wherein a thickness/height of the big toe portion is essentially zero (i.e., “zero to a few millimeters”) and is smaller than both the thickness/height h2 of the little toe portion, and the thickness/height h1 of the medial and lateral heel portions – note that Adair discloses in paragraph 0176 wherein “the heel section 21 has a first dimension that is substantially uniform from the outer edge to the inner edge along a back edge of the apparatus” such that the thickness of the medial heel portion and the lateral heel portion are substantially the same).
Adair fails to explicitly disclose a pair of insoles.
However, the Examiner notes that it is extremely well-known in the art to provide insoles in pairs, so as to accommodate both feet of an intended wearer. As such, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have provided Adair’s insole as a pair of insoles, so as to accommodate both the left foot and right foot of the intended wearer.
Furthermore, such a modification would amount to a mere duplication of parts. It has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. See MPEP 2144.04(VI)(B).
Regarding claim 2, Adair further discloses wherein the thickness of the insole gradually increases from the base of the big toe portion (medial portion of 25), to the medial heel portion (medial portion of 21), the lateral heel portion (lateral portion of 21), and the base of the little toe portion (lateral portion of 25; see Figs. 5-7, paragraphs 0171-0178, and note above; Adair discloses wherein a thickness/height of the big toe portion is smaller than a thickness/height h2 of the little toe portion, a thickness/height h1 of the medial heel portion, and a thickness/height h1 of the lateral heel portion, and wherein the thickness of the big toe portion gradually increases towards h1 and h2).
Claims 1 and 4, as best as can be understood, are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US Patent No. 5,345,701).
Regarding claim 1, Smith discloses a pair of golf insoles (20, 22; see Figs. 1-3; column 2, lines 29-55; and column 3, line 56 – column 4, line 31; note that while the insoles are shown to have opposite valgus/varus corrections, each insole is independently adjustable/customizable via wedges 24, 26 such that both insoles can be adjusted to have the correction/configuration of right insole 22; see also note below regarding “golf insole”), comprising:
a big toe portion (portion of insole 10 located along medial portion of forefoot wedge 24);
a little toe portion (portion of insole 10 located along lateral portion of forefoot wedge 24);
a medial heel portion (portion of insole 10 located along medial portion of rearfoot wedge 26); and
a lateral heel portion (portion of insole 10 located along lateral portion of rearfoot wedge 26);
wherein a thickness of a base of the big toe portion is smaller than a thickness of each of the lateral heel portion and a base of the little toe portion (see Fig. 1 and column 3, line 56 – column 4, line 31).
Smith fails to specifically disclose wherein the thickness of the base of the big toe portion is also smaller than the thickness of the medial heel portion.
However, Smith further teaches wherein the angles of the forefoot wedge (24) and rear foot wedge (26) can each vary depending on the patient’s needs (see column 2, lines 29-36; column 4, lines 15-31 and at least claim 1), which would also result in varying thicknesses of each wedge at the medial and/or lateral sides according to the varying angle. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to pursue the known options within his or her technical grasp, and to experiment with the finite number of thickness ratio options (i.e., first option: thickness at the base of the big toe is smaller than thickness of the medial heel, second option: thickness at the base of the big toe is the same as thickness of the medial heel, third option: thickness at the base of the big toe is greater than thickness of the medial heel), to provide a desired level or angle of valgus/varus correction at the forefoot and rearfoot portions of the insole, according to the wearer’s needs. See MPEP 2143(I)(E).
Regarding the limitation “golf insoles,” Smith discloses a pair of insoles that are configured to be used for walking and running (see column 2, lines 42-49) and are therefore capable of being used for golf. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). See MPEP 2114 (II).
Regarding claim 4, Smith discloses the limitations of claim 1, as discussed above, but fails to explicitly disclose wherein an angle of inclination from the base of the little toe portion to the base of the big toe portion (i.e., the angle of inclination of forefoot wedge 24) is the same as an angle of inclination from the lateral heel portion to the medial heel portion (i.e., the angle of inclination of rearfoot wedge 26).
However, as discussed above, Smith further teaches wherein the inclination angles of the forefoot wedge (24) and rear foot wedge (26) can each vary depending on the patient’s needs (see column 2, lines 29-36; column 4, lines 15-31 and at least claim 1). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to pursue the known options within his or her technical grasp, and to experiment with the finite number of inclination angle ratio options (i.e., first option: forefoot wedge 24 and rearfoot wedge 26 have the same angle, second option: forefoot wedge 24 has a greater inclination angle, third option: rearfoot wedge 26 has a greater inclination angle), to provide a desired level or angle of valgus/varus correction at the forefoot and rearfoot portions of the insole, according to the wearer’s needs. See MPEP 2143(I)(E).
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 JOCELYN BRAVO whose telephone number is (571)270-0581. The examiner can normally be reached Mon - Fri 9:30am - 6:00pm.
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, Clinton Ostrup, can be reached at (571) 272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOCELYN BRAVO/Primary Examiner, Art Unit 3732
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