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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 11, 2025 has been entered.
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.
1. Claim(s) 25-40, 42, and 44 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Long (US 2004/0045195).
Regarding Claim 25, Long discloses an insole (32) configured to conform to an article of footwear (as seen in Fig.2), comprising: an insert body (50,48,46,52) having a generally elongated shape and an outer perimeter (i.e. outer edge perimeter of 32) configured to substantially conform to the article of footwear (as seen in Fig.2 & 3); and a plurality of perforated cutouts (34) formed in the insert body, each perforated cutout configured to be selectively removed from the insert body to form an aperture (38) entirely through the insert body (para.25; as seen in Fig.3 & 5).
Regarding Claim 26, Long discloses an insole of claim 25, wherein the insert body includes a top section (i.e. toe section of 36), a central section (i.e. area including 34), and a bottom section (i.e. heel section of 36)(as seen in Fig.3).
Regarding Claim 27, Long discloses an insole of claim 26, wherein the central section has a surface area greater than a surface area of the top section and a surface area of the bottom section (as seen in Fig.3, the area including 34 is greater than a toe section or 36 and a heel section of 36).
Regarding Claim 28, Long discloses an insole of claim 27, wherein the plurality of perforated cutouts (34) is disposed in the central section (i.e. area including 34)(as seen in Fig.3).
Regarding Claim 29, Long discloses an insole of claim 28, wherein the top section (i.e. toe section of 36) and the bottom section (i.e. heel section of 36) are each devoid of perforated cutouts (para.25; as seen in Fig.3).
Regarding Claim 30, Long discloses an insole of claim 29, wherein the plurality of perforated cutouts (34) is arranged in an array (as seen in Fig.3).
Regarding Claim 31, Long discloses an insole of claim 30, wherein the array is a staggered array (as seen in Fig.3).
Regarding Claim 32, Long discloses an insole of claim 25, wherein each perforated cutout (34) of the plurality of perforated cutouts is separated by a spacing (as seen in Fig.3).
Regarding Claim 33, Long discloses an insole of claim 32, wherein a diameter of each perforated cutout (34) of the plurality of perforated cutouts is greater than any spacing between any two adjacent perforated cutouts (as seen in Fig.3 & 5; the diameter of 34 is greater than spacing between 34).
Regarding Claim 34, Long discloses an insole of claim 33, wherein the spacing between each perforated cutout of the plurality of perforated cutouts is formed by a portion of the insert body (i.e. the spacing is formed between two 34, which are a portion of the insert body, inasmuch as has been claimed by Applicant).
Regarding Claim 35, Long discloses an insole of claim 34, wherein the spacing between each perforated cutout of the plurality of perforated cutouts uniform across an array of the plurality of perforated cutouts (as seen in Fig.3, the spacing between 34 is uniform, inasmuch as has been claimed by Applicant).
Regarding Claim 36, Long discloses an insole of claim 35, wherein the insert body includes a bottom surface (of 52) configured to engage the article of footwear (as seen in Fig.2, 52 engages the shoe, inasmuch as has been claimed by Applicant, as 52 is inserted into the shoe).
Regarding Claim 37, Long discloses an insole of claim 36, wherein the bottom surface (of 52) includes a plurality of tearaway strips (52 are tearaway strips) configured to secure the plurality of perforated cutouts in place until selectively removed by a user (para.26; as seen in Fig.3 & 5).
Regarding Claim 38, Long discloses an insole of claim 37, wherein each tearaway strip (52) of the plurality of tearaway strips is coupled to a portion (46) of the insert body and to a portion (i.e. side wall of 52 of second 34) of an adjacent perforated cutout to retain the adjacent perforated cutout in place until selectively removed (as seen in Fig.3 & 5).
Regarding Claim 39, Long discloses an insole of claim 38, wherein each tearaway strip (52) of the plurality of tearaway strips extends to a portion (i.e. side of spacing between 34) of the spacing (as seen in Fig.3 & 5).
Regarding Claim 40, Long discloses an insole of claim 36, wherein the insert body includes a top surface (of 48) disposed opposite the bottom surface (of 52)(para.26; as seen in Fig.5).
Regarding Claim 42, Long discloses an insole (32) configured to conform to an article of footwear (as seen in Fig.2), comprising: an insert body (50,48,46,52) having a generally elongated shape and an outer perimeter (i.e. outer edge perimeter of 32) configured to substantially conform to the article of footwear (as seen in Fig.2 & 3); and a plurality of perforated cutouts (34) formed in the insert body, each perforated cutout configured to be selectively removed from the insert body to form an aperture (38) entirely through the insert body (para.25; as seen in Fig.3 & 5); wherein: the insert body includes a top section (i.e. toe section of 36), a central section (i.e. area including 34), and a bottom section (i.e. heel section of 36)(as seen in Fig.3), the central section has a surface area greater than a surface area of the top section and a surface area of the bottom section (as seen in Fig.3, the area including 34 is greater than a toe section or 36 and a heel section of 36), the plurality of perforated cutouts (34) is disposed in the central section (as seen in Fig.3), the top section and the bottom section are each devoid of perforated cutouts (para.25; as seen in Fig.3), the plurality of perforated cutouts is arranged in an array, and the array is a staggered array (as seen in Fig.3).
Regarding Claim 44, Long discloses a method for using an insole configured to conform to an article of footwear to relieve pain from a protrusion on a foot, comprising: providing the insole of claim 1; identifying an area of the insole that corresponds with the protrusion (76) on the foot (72)(as seen in Fig.8); and removing each perforated cutout of the plurality of perforated cutouts disposed in the area of the insole, thereby relieving pressure on the protrusion (para.24-26).
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) 41 and 43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Long (US 2004/0045195) in view of Chambers (US).
Regarding Claim 41, Long discloses an insole of claim 40, wherein the top surface includes an overlay (of 50). Long does not disclose the overlay comprising a plurality of outlines configured to identify a foot measurement. However, Chambers teaches an insole (10) having an overlay with a plurality of outlines (520,522) configured to identify a foot measurement (as seen in Fig. Co.8, lines 4-16).
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 overlay of
Long to include a plurality of outlines, as taught by Chambers, in order to provide an insole with sizing lines to adjust the insole size to best fit a user's foot and shoe.
Regarding Claim 43, Long discloses an insole (32) configured to conform to an article of footwear (as seen in Fig.2), comprising: an insert body (50,48,46,52) having a generally elongated shape and an outer perimeter (i.e. outer edge perimeter of 32) configured to substantially conform to the article of footwear (as seen in Fig.2 & 3); and a plurality of perforated cutouts (34) formed in the insert body, each perforated cutout configured to be selectively removed from the insert body to form an aperture (38) entirely through the insert body (para.25; as seen in Fig.3 & 5); wherein: the insert body includes a top section (i.e. toe section of 36), a central section (i.e. area including 34), and a bottom section (i.e. heel section of 36)(as seen in Fig.3), the central section has a surface area greater than a surface area of the top section and a surface area of the bottom section (as seen in Fig.3, the area including 34 is greater than a toe section or 36 and a heel section of 36), the plurality of perforated cutouts (34) is disposed in the central section (as seen in Fig.3), the top section and the bottom section are each devoid of perforated cutouts (para.25; as seen in Fig.3), the plurality of perforated cutouts is arranged in an array, and the array is a staggered array (as seen in Fig.3), each perforated cutout (34) of the plurality of perforated cutouts is separated by a spacing (as seen in Fig.3), a diameter of each perforated cutout (34) of the plurality of perforated cutouts is greater than any spacing between any two adjacent perforated cutouts (as seen in Fig.3 & 5; the diameter of 34 is greater than spacing between 34), the spacing between each perforated cutout of the plurality of perforated cutouts is formed by a portion of the insert body (i.e. the spacing is formed between two 34, which are a portion of the insert body, inasmuch as has been claimed by Applicant), the spacing between each perforated cutout of the plurality of perforated cutouts uniform across an array of the plurality of perforated cutouts (as seen in Fig.3, the spacing between 34 is uniform, inasmuch as has been claimed by Applicant), the insert body includes a bottom surface (of 52) configured to engage the article of footwear (as seen in Fig.2, 52 engages the shoe, inasmuch as has been claimed by Applicant, as 52 is inserted into the shoe), the bottom surface (of 52) includes a plurality of tearaway strips (52 are tearaway strips) configured to secure the plurality of perforated cutouts in place until selectively removed by a user (para.26; as seen in Fig.3 & 5), each tearaway strip (52) of the plurality of tearaway strips is coupled to a portion (46) of the insert body and to a portion (i.e. side wall of 52 of second 34) of an adjacent perforated cutout to retain the adjacent perforated cutout in place until selectively removed (as seen in Fig.3 & 5), each tearaway strip (52) of the plurality of tearaway strips extends to a portion (i.e. side of spacing between 34) of the spacing (as seen in Fig.3 & 5), the insert body includes a top surface (of 48) disposed opposite the bottom surface (of 52)(para.26; as seen in Fig.5), and the top surface includes an overlay (of 50)(as seen in Fig.5). Long does not disclose the overlay comprising a plurality of outlines configured to identify a foot measurement. However, Chambers teaches an insole (10) having an overlay with a plurality of outlines (520,522) configured to identify a foot measurement (as seen in Fig. Co.8, lines 4-16).
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 overlay of
Long to include a plurality of outlines, as taught by Chambers, in order to provide an insole with sizing lines to adjust the insole size to best fit a user's foot and shoe.
Response to Arguments
In view of Applicant's amendment, the search has been updated, and new grounds of rejection have 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