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
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on October 23, 2025 has been entered.
Election/Restrictions
Newly amended claim 15 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claim 15 has been amended to be drawn to non-elected Species 1: Fig.3 & 6. The elected Species does not include a “rim extending an entire periphery of the internal surface”.
Since applicant has received an action on the merits for the elected invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 15 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Objections
1. Claim 3 objected to because of the following informalities: Claim 3 recites “each at least one attachment portion” this appears to be an error and should read “each of the at least one attachment portions”, as two attachment portions are positively claimed in Claim 2 from which Claim 3 depends. Appropriate correction is required.
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.
2. Claims 2-3, 9-11, and 19 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 2 and 9 recite “an inner stabilization compensating overshoe and…an outer stabilization compensating overshoe” and “an inner stabilization compensating overshoe attached to the inner receiving surface and/or an outer stabilization compensating overshoe attached to the outer receiving surface”. The claim limitation is indefinite as Claim 1 previously recites “wherein the inner receiving surface is configured to receive and hold an inner stabilization compensating overshoe and the outer receiving surface is configured to receive and hold an outer stabilization compensating overshoe” and it is unclear if Applicant is intending to refer to the previously recited “inner stabilization compensating overshoe and…outer stabilization compensating overshoe” or if Applicant is intending to refer to a second set of overshoes. It appears Applicant is intending to refer to the previously recited structures. Claims 2 and 9 are rejected as best understood by Examiner.
Claim 19 recites “each of the inner stabilization compensating overshoe and the outer stabilization compensating overshoe comprises an internal surface at a rim at a periphery of the internal surface”. The claim limitation is indefinite as it is highly unclear how the overshoes comprise “an internal surface at a rim at a periphery of the internal surface”. Is Applicant intending to claim an internal surface periphery having a rim? Or is the second recitation of the internal surface meant to be directed to another structure? Claim 19 is rejected as best understood by examiner.
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.
3. Claim(s) 1-5, 7-11, and 16-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Reilly (US 2010/0242304).
Regarding Claim 1, Reilly discloses a tread sole (14) for a shoe, said tread sole comprising a lower surface (i.e. ground engaging surface of 14) having a lengthwise axis (i.e. centerline from the heel to the toe), a side surface (i.e. sidewall surface), and an upper surface (i.e. surface of 14 facing the upper) opposing the lower surface, said side surface comprising an inner edge (i.e. medial edge) and an outer edge (i.e. lateral edge), said lower surface comprising a heel zone (i.e. heel region), a tip zone (i.e. toe region) and a middle zone (i.e. middle region) located between said heel zone and said tip zone (as seen in Fig.2-4 and annotated Figure below), said middle zone comprising an inner receiving surface (medial 38) and an outer receiving surface (lateral 38) that are disconnected from one another (as seen in Fig.4), said inner receiving surface extending in relief under the tread sole along the inner edge of the side surface, said outer receiving surface extending in relief under the tread sole along the outer edge of the side surface (para.29), wherein the inner receiving surface is configured to receive and hold an inner stabilization compensating overshoe (i.e. medial 50) and the outer receiving surface (i.e. lateral 50) is configured to receive and hold an outer stabilization compensating overshoe in a spaced manner so that a gap (i.e. space/gap of flat area between medial 38 & lateral 38) is located therebetween to expose at least part of the middle zone (i.e. flat area of 14 between medial 38 & lateral 38) at the gap (as seen in Fig.4).
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Regarding Claim 2, Reilly discloses a tread sole according to claim 1, wherein the inner receiving surface (medial 38) comprises at least one attachment portion (i.e. medial 38 is an attachment portion) for attaching an inner stabilization compensating overshoe (i.e. medial 50) and the outer receiving surface (lateral 38) comprises at least one attachment portion (i.e. lateral 38 is an attachment portion) for attaching an outer stabilization compensating overshoe (i.e. lateral 50)(as seen in Fig.4 & 6; para.29).
Regarding Claim 3, Reilly discloses a tread sole according to claim 2, wherein each at least one attachment portion corresponds to a surface (30,36) which is configured to come into contact with the ground and which is configured to receive an adhesive element (para.35).
Regarding Claim 4, Reilly discloses a tread sole according to claim 1, wherein at least one attachment portion (i.e. 38 is an attachment portion) is located at the middle zone and comprises at least one groove (38; para.29) configured to receive at least one complementary rib (42; para.35).
Regarding Claim 5, Reilly discloses a tread sole according to claim 1, wherein at least one attachment portion (i.e. 38 is an attachment portion) is located at the middle zone and comprises (via attachment) at least one rib (42; para.35) configured to receive at least one complementary groove (38; para.29).
Regarding Claim 7, Reilly discloses a tread sole according to claim 1, wherein the inner receiving surface and the outer receiving surface each have a convex external edge (54) at an inner side surface (i.e. medial side wall) and an outer side surface (i.e. lateral side wall), respectively, of the tread sole (as seen in Fig.2-4).
Regarding Claim 8, Reilly discloses a shoe comprising a tread sole according to claim 1 and an upper (12) attached to said tread sole (14)(as seen in Fig.1).
Regarding Claim 9, Reilly discloses a shoe according to claim 8, further comprising an inner stabilization compensating overshoe (i.e. medial 50) attached to the inner receiving surface and/or an outer stabilization compensating overshoe (i.e. lateral 50) attached to the outer receiving surface (as seen in Fig.2-4 & 6), said inner stabilization compensating overshoe being spaced from said outer stabilization compensating overshoe by a gap (i.e. voids in 50) and at least part of the middle zone (30,36) of the lower surface is exposed at the gap (as seen in Fig.3-4).
Regarding Claim 10, Reilly discloses a shoe according to claim 9, wherein the inner stabilization compensating overshoe (i.e. medial 50) is attached to the inner receiving surface by complementary attachment members (38,42) and/or the outer stabilization compensating overshoe (i.e. lateral 50) is attached to the outer receiving surface by complementary attachment members (38,42)(para.29 & 35).
Regarding Claim 11, Reilly discloses a shoe according to claim 10, wherein the complementary attachment members are of a clip-on type (as seen in Fig.4; 38 & 42 are a “clip-on type”, inasmuch as has been claimed by Applicant, in that the protrusions clip into the channels).
Regarding Claim 16, Reilly discloses a tread sole according to claim 1, wherein said inner receiving surface (medial 38) extends in relief away from the upper surface along the inner edge of the side surface and said outer receiving surface (lateral 38) extends in relief away from the upper surface along the outer edge of the side surface (as seen in Fig.4; the receiving surfaces extend in relief “away” from the top surface of 14 in that they are on the bottom surface which extends “away” from the top surface).
Regarding Claim 17, Reilly discloses a tread sole according to claim 1, wherein said inner receiving surface (medial 38) extends in relief away from the lengthwise axis along the inner edge of the side surface and said outer receiving surface (lateral 38) extends in relief away from the lengthwise axis along the outer edge of the side surface (as seen in Fig.4; 38 are in relief “away” from the lengthwise axis).
Regarding Claim 18, Reilly discloses a tread sole according to claim 1, wherein an inner stabilization compensating overshoe (i.e. medial 50) is attached to the inner receiving surface of the middle zone and an outer stabilization compensating overshoe (i.e. lateral 50) is attached to the outer receiving surface of the middle zone (see annotated Figure above), and at least part of the middle zone of the lower surface (30,36) is exposed at a gap (i.e. voids in 50) between the inner stabilization compensating overshoe and the outer stabilization compensating overshoe (as seen in Fig.3-4).
Regarding Claim 19, Reilly discloses a tread sole according to claim 18, wherein each of the inner stabilization compensating overshoe and the outer stabilization compensating overshoe comprises an internal surface at a rim (i.e. top peripheral surface of vertical portion of 50) at a periphery of the internal surface (as seen in Fig.2 & 6).
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.
4. Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reilly (US 2010/0242304).
Regarding Claim 6, Reilly discloses the invention substantially as claimed above. Morris does not disclose wherein the inner receiving surface and the outer receiving surface are identical in shape and dimensions. However, 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 inner and the outer receiving surfaces of Morris to be identical in shape and dimensions, in order to provide the optimum support and traction to a user. Further, it would have been an obvious matter of design choice to one skilled in the art before the effective filing date of the claimed invention to construct the inner and outer receiving surfaces of Reilly to be identical in shape and dimensions, since applicant has not disclosed that this solves any stated problem or is anything more than one of numerous shapes or configurations a person of ordinary skill in the art would find obvious for the purpose of providing stability. In re Dailey and Eilers, 149 USPQ 47 (1966). Further, Applicant has provided no criticality for the inner and outer receiving surfaces to be identical in shape and dimensions over being different shapes and dimensions (Applicant's Specification, Para.30).
Response to Arguments
Applicant's arguments filed October 23, 2025 have been fully considered but they are not persuasive. Applicant’s argument regarding the 35 U.S.C. 112(b) rejection of Claim 9 remains unpersuasive. Applicant’s argument was previously responded to on Pages 13-14 of the Final Rejection filed 07/30/2025.
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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732