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 Examiner acknowledges the remarks and amendments filed on 11/13/25. Claims 1, 2, 4, and 10 have been amended. Claims 1-11 are pending.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-32 of U.S. Patent No. 11737512_B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims teach all of the instant independent claim’s limitations.
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.
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.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zeng CN 109251464 A (see Machine English translation).
Regarding Claims 1-11, Zeng discloses shoe products (implicitly embraces Applicants’ boot and sandals), specifically midsoles (paragraph 0004) (corresponds to claimed insole heel portion and insole toe portion) made from a foam material comprising
10 to 50 pbw SEBS (meets Applicants’ SEBS);
20 to 50 pbw EVA (meets Applicants’ EVA and overlaps content thereof);
10 to 30 pbw POE (meets Applicants’ POE and overlaps content thereof);
3 to 10 pbw EDPM;
0.4 to 10 pbw external lubricant;
0.4 to 1 pbw internal lubricant;
0.2 to 1.2 pbw vulcanizing agent;
0.5 to 1.5 pbw vulcanizing activator;
0.6 to 2.0 pbw foaming agent; and (e.g., abstract, Examples).
Considering Zeng discloses the production of a shoe from a similar composition in Example 1, it would have been obvious to one having ordinary skill in the art to produce a shoe (implicitly suggests all footwear inclusive of boots and sandals) (paragraphs 0093, 0124) from Zeng’s above-described Example 2 foam material with the reasonable expectation of success. To the extent only the foam material is used, it would be expected that the resultant shoe would necessarily have a one-piece unitary structure wherein all its portions are composed of the exemplified foam material. Furthermore, Zeng discloses having a compression set of less than 30% (Table 1, paragraph 0134), which meets limitation “iii.” of instant Claim 1. Moreover, based on Zeng’s Table 1 [0134], it would be expected that Zeng’s resultant shoe, being similarly-constituted to the presently claimed boot and sandals, would meet at least one of the remaining claimed properties.
Response to Arguments
Applicant's arguments filed 11/13/25 have been fully considered but they are not persuasive.
Applicants state: “Zeng nowhere describes a shoe, let alone a shoe comprising an outsole, a separately formed and attached upper, and an insole core disposed within the outsole.”
The Examiner respectfully submits that Zeng discloses shoe products, having midsoles (paragraph 0004) (corresponds to claimed insole heel portion and insole toe portion), that is used to form an entire “shoe” (paragraphs 0093, 0124). The very fact that Zeng discloses making a “shoe” and then moreover specifies that this “shoe” has “midsoles”, implies it having an upper portion and an outsole, because this what is plainly understood by “shoe”.
Applicants state: “The Office Action asserts that "it would have been expected" to produce a one-piece shoe from Zeng's foam. Even if that were true, a one-piece monolithic article is the antithesis of Applicant's claimed multi-component shoe having distinct, separately formed structures.”
The Examiner respectfully submits that what was meant by one-piece is that the entire shoe is made in the mold, which includes the “midsole” (corresponds to claimed insole) as well as by implication, the upper and outsoles.
Applicants state: “The Office Action provides no teaching, suggestion, or articulated motivation to take Zeng's foamed article and convert it into one sub-component (an insole core), while sourcing the outsole and upper from different materials and assembling them as separate, distinct structures.”
The Examiner respectfully submits that Zeng discloses shoe products, having midsoles (paragraph 0004) (corresponds to claimed insole heel portion and insole toe portion), that is used to form an entire “shoe” (paragraphs 0093, 0124). The very fact that Zeng discloses making a “shoe” and then moreover specifies that this “shoe” has “midsoles”, implies it having an upper portion and an outsole, because this what is plainly understood by “shoe”.
Applicants state: “Further, each independent claim requires that the insole core exhibit at least one quantified material performance property, skid resistance, hardness, compression set, density, or abrasion resistance, defined by a specific numerical range and measured on the finished article using standardized test protocols. Zeng neither reports nor enables these properties, and the Office has not carried its burden to show that the claimed performance limitations are disclosed or inherently met.”
Zeng discloses having a compression set of less than 30% (Table 1, paragraph 0134), which meets limitation “iii.” of instant Claim 1. Moreover, based on Zeng’s Table 1 [0134], it would be expected that Zeng’s resultant shoe, being similarly-constituted to the presently claimed boot and sandals, would meet at least one of the remaining claimed properties.
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.
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/TAHSEEN KHAN/Primary Examiner, Art Unit 1781 March 17, 2026