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 .
DETAILED ACTION
Response to Amendment
Applicant’s amendment filed August 5, 2026 has been received, Claims 1-3, 5, and 7-9 are currently pending, with Claims 8-9 remaining withdrawn from prosecution at this time.
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.
1. Claims 1-3, 5, and 7-9 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.
Claim 1 recites “a wearer-provided orthotic” and “the kit comprising:..a corresponding wearer-provided orthotic”. The claim limitation is indefinite as it is wholly unclear if the orthotic is part of the invention or not, as Applicant is attempting to claim the orthotic is wearer provided, but also positively claiming the orthotic is part of the kit. Claims 1 is rejected as best understood by examiner.
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.
2. Claim(s) 1-3, 5, and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clark (US 2006/0107553) in view of Celmo (US 2004/0000076).
Regarding Claim 1, Clark discloses a footwear kit for use by a wearer having at least one of a wearer-provided orthotic for a left foot (a second one of left 202) and a wearer-provided orthotic for a right foot (a second one of right 202), the kit comprising: left and right footbeds (left 202 & right 202) for the left and right footwear items, respectively (para.35, 40 & 77); left and right forefoot inserts (left 204 & right 204) receivable in the left and right footwear items, respectively, as to tighten a fit thereof to the wearer, said forefoot inserts being configured to separately underlie one of the corresponding footbed (left 202 or right 202) or a corresponding wearer-provided orthotic (a second one of left 202 or right 202) in the corresponding footwear items; and a fitting guide (Abstract & para.33 & 35; i.e. a user selecting the desired footbed & cartridge in response to comfort is "a fitting guide", inasmuch as has been claimed by Applicant, in that the guide is a user's thinking & decision making in response to comfort) directing that, for either or each foot, for which the wearer has a corresponding orthotic: the wearer tries on the footwear item for that foot with only the wearer-provided orthotic therein; and the wearer tries on the footwear item for that foot with the forefoot insert for that foot arranged such that it underlies the wearer-provided orthotic in the footwear item for that foot if the fit of that footwear item with only the wearer-provided orthotic therein is loose to determine whether said forefoot insert is required (as seen in Fig.2a-b & Fig.5a-c); and for either or each foot for which the wearer has no corresponding wearer-provided orthotic: the wearer tries on the footwear item for that foot with the forefoot insert for that foot arranged such that it underlies the corresponding footbed in the footwear item for that foot if the fit of that footwear item with only said footbed therein is loose to determine whether said forefoot insert is required (as seen in Fig.2a-b & Fig.5a-c; para.35, 40, 77 & 91-92). Clark does not disclose the fitting guide including instructions that direct the user. However, Celmo teaches a kit for providing comfort to the user that includes a fitting guide including instructions (22) that direct the user (Abstract, para.13 & 18).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the kit of Clark to include instructions, as taught by Celmo, in order to provide direction to a user for using the kit. When in combination, Clark and Celmo teach the kit including a fitting guide including instructions that direct for either or each foot, for which the wearer has a corresponding orthotic: the wearer tries on the footwear item for that foot with only said orthotic therein; and the wearer tries on the footwear item for that foot with the forefoot insert for that foot arranged such that it underlies said orthotic in the footwear item for that foot if the fit of that footwear item with only the orthotic therein is loose to determine whether said forefoot insert is required; and for either or each foot for which the wearer has no corresponding orthotic: the wearer tries on the footwear item for that foot with the forefoot insert for that foot arranged such that it underlies the corresponding footbed in the footwear item for that foot if the fit of that footwear item with only said footbed therein is loose to determine whether said forefoot insert is required. It is noted that including instructions in any sort of kit to inform use of the kit is known in industry.
Regarding Claim 2, Clark discloses a kit according to claim 1, wherein the left and right footbeds are provided in the left and right footwear items, respectively (para.35, 40 & 77).
Regarding Claim 3, Clark discloses a kit according to claim 2, wherein the footbeds are adapted to first be removed from the corresponding footwear item which is to receive the orthotic (para.35, 40, 164 & 166; i.e. a user is capable of deciding to remove one 202 based on comfort and insert a different 202).
Regarding Claim 5, Modified Clark discloses a kit according to claim 1, wherein the left and right footbeds include a first left footbed and a first right footbed (one set of 202), the kit comprising, in addition to the first left and right footbeds, a second left footbed and a second right footbed, wherein the second left and right footbeds (second set of 202) are thinner than the first left and right footbeds (as seen in Fig.3D, the 202 without 206 would be thinner; 202 in Fig.3D is thicker than 202 in Fig.8A; other examples: Fig.16A & 22A) respectively, and wherein the fitting guide additionally directs that, for either or each foot for which the wearer has no wearer-provided orthotic, corresponding one of the second left and right footbeds be inserted in the footwear item for that foot if the fit of that footwear item with the corresponding one of the second left and right footbeds therein is tight (para.35, 40, 164 & 166; i.e. a user is capable of deciding to remove one 202 based on comfort and insert a different 202).
Regarding Claim 7, Clark discloses a kit according to claim 1, wherein the kit comprises a plurality of left forefoot inserts (left 204/204a,204b,204c; para.35-36) of differing thickness and a plurality of right forefoot inserts (right 204/204a,204b,204c; para.35-36) of differing thickness, whereby the fit of each footwear item to the wearer is variable, according to which of the respective inserts is inserted into that footwear item (para.25 & 91-92; as seen in Fig.5a-c).
Response to Arguments
Applicant's arguments filed August 5, 2026 have been fully considered but they are not persuasive.
Applicant’s Remarks: Applicant asserts Clark fails to teach or suggest forefoot inserts configured to separately underlie each of a footbed included in a footwear kit or a wearer-provided orthotic of a wearer. Specifically, as recited in the claim, the left and right footbeds are included in the footwear kit, whereas the wearer-provided orthotic is an orthotic provided by the wearer separately from the footwear kit. Applicant argues the Office has not identified a separate element for the orthotic recited in the claim. Further, Applicant argues the inserts 204 of Clark are not "configured to separately underlie one of the corresponding footbed or a corresponding wearer-provided orthotic in the corresponding footwear items." A wearer-provided orthotic, separate from a kit including the insert 204 and footbed 202 of Clark, would not include interlocking features corresponding to the raised portions 226, tabs 212, and posts 216 of the insert 204. The insert 204 of Clark is thus not configured to underlie a wearer-provided orthotic, as attempting to use the insert 204 with a wearer-provided orthotic would result in protrusions at portions of the wearer- provided orthotic, providing an uneven surface for a wearer. Further, Clark fails to teach or suggest a footwear kit including a fitting guide including instructions, as recited in claim 1. In the Office Action, the Office alleges that "a user selecting the desired footbed & cartridge in response to comfort is 'a fitting guide"'. Office Action, p. 4. However, a user's internal mental decision or trial-and-error action is not a physical "fitting guide including instructions" included in a footwear kit as claimed.
Examiner’s Response: Examiner respectfully disagrees. Simply because components of a claim are recited separately does not mean they are structurally distinct from one another, particularly when the two recited structures are known in the footwear art as synonymous structures. Additionally, the claims contain no further structural limitations which distinguish the footbed from the wearer-provided orthotic. Applicant’s argument that the Office has not identified a separate element for the wearer-provided orthotic recited in the claim is not found persuasive, as the Office clearly pointed to a “second one of left 202 or right 202” as being the wearer-provided orthotic while a “first left 202 or first right 202” is the claimed footbed; Clark explicitly teaches multiple sets of 202. Applicant’s argument that insert 204 of Clark is thus not configured to underlie a wearer-provided orthotic, as attempting to use the insert 204 with a wearer-provided orthotic would result in protrusions at portions of the wearer- provided orthotic, providing an uneven surface for a wearer, is not found persuasive as the insert 204 of Clark clearly is accepted under the 202 “wearer-provided orthotic” without issue. Applicant has provided no amended limitations that distinguish the claimed “wearer-provided orthotic” from that taught by Clark. Further, Applicant’s argument that Clark fails to teach or suggest a footwear kit including a fitting guide including instructions is not found persuasive. Clark teaches a “fitting guide”, inasmuch as has been claimed by Applicant. Applicant’s argument also does not appear to address the rejection as laid out, as Clark was not used to teach the claimed instructions; Celmo teaches a fitting guide using instructions and was used to modify Clark (as seen in Pg.5 of the Non-Final Rejection filed 05/05/2026). For all of these reasons, Applicant’s arguments are not found persuasive.
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 MEGAN E LYNCH whose telephone number is (571)272-3267. The examiner can normally be reached Monday to Friday, 8:00am-4:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alissa J. Tompkins can be reached at 571-272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732
