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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/20/2026 has been entered.
Claims 1, 16, and 17 have been amended, claim 7 has been canceled, and claims 1-3, 5-6, 8-17, and 20-21 remain pending in this application.
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 1-3, 5-6, 8-17, and 20-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,721,403. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 5, 9-12, and 14-17 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Eldem et al. (US 2022/0287408), herein Eldem.
Regarding claim 1 Eldem discloses an article of footwear (10) comprising: a heel region including a posterior end of the article of footwear, a mid-foot region, and a forefoot region including an anterior end of the article of footwear; a lateral side, and a medial side opposite the lateral side (Fig. 1); an upper (200); a sole structure (100), the sole structure coupled to the upper, and wherein the sole structure further comprises; a midsole having a first cushioning element (110) extending from the posterior end to the anterior end; and a heel clip (112) disposed adjacent to the first cushioning element in the heel region, the heel clip including: a support (upstanding wall; Fig. 5) including an inner surface extending from a first end on the medial side to a second end on the lateral side, wherein the support has a parabolic shape, and wherein a height of the support increases from the first end to a vertex at a lateral center of the heel clip and decreases from the vertex to the second end (Fig. 4, 5); and a base (166, 170, 172) including an upper surface extending from the first end to the second end, and a bottom surface extending from the first end to the second end, the upper surface including one or more raised portions (166, which is raised above supports 170, 172), wherein the first cushioning element includes one or more recessed portions (150), the one or more recessed portions forming a first receiving area for portions of the heel clip, wherein the one or more recessed portions of the first cushioning element and the one or more raised portions of the base are complementary in shape and the one or more raised portions abut the one or more recessed portions (paragraphs 0042-0043, 0066-0067, 0070, 0084-0088; Fig. 1-6).
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Regarding claim 2, Eldem discloses that the heel clip is disposed in the heel region, the support includes a rim extending along a portion of the inner surface from the first end to the second end, and the rim forms a first boundary of a receiving area of the heel clip, and wherein the upper surface forms a second boundary of the receiving area of the heel clip (Fig. 5).
Regarding claim 3, Eldem discloses that the base and the support together form the outer surface of the heel clip; and wherein the heel clip further includes a recess disposed between the support and the base within an outer surface of the heel clip (Fig. 4), and a receiving area disposed between the support and the base on the inner surface of the heel clip (Fig. 5).
Regarding claim 5, Eldem discloses that the heel clip is U-shaped (wherein at least the support and element 170 are U-shaped; Fig. 5).
Regarding claim 9, Eldem discloses a second cushioning element (108) disposed in the heel region, the second cushioning element coupled to the bottom surface of the base, wherein a top surface of a medial portion, a top surface of a lateral portion, and a top surface of a base portion of the second cushioning element are covered by the base (Fig. 2, 6, 11).
Regarding claim 10, Eldem discloses that the sole structure further comprises: an outsole (104) coupled to the midsole forming a ground-engaging surface, the outsole comprising: an outsole layer extending from a first end disposed in the heel region toward a second end disposed at the anterior end (Fig. 5), the outsole layer including a cavity (202) and a recess (192); a heel pad (tread element; Fig. 6) disposed on a bottom surface of the outsole layer; and a heel cup (198) coupled to a bottom surface of the second cushioning element (paragraphs 0090-0093; Fig. 5).
Regarding claim 11, Eldem discloses that a portion of a bottom surface of the first cushioning element is exposed through the cavity and forms a portion of the outsole (paragraph 0093; Fig. 10).
Regarding claim 12 Eldem discloses that the second cushioning element includes a fluid-filled bladder.
Regarding claim 14, Eldem discloses that the heel clip is coupled to the first cushioning element between a first segment of the first cushioning element forming a first boundary of a second receiving area of the first cushioning element and a second segment of the first cushioning element forming a second boundary of the second receiving area of the first cushioning element (Fig. 4).
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Regarding claim 15, Eldem discloses that the first cushioning element and the heel clip are coupled so that the midsole has a continuous and flush outer side surface, wherein the outer side surface extends between top and bottom surfaces of the midsole (Fig. 1).
Regarding claim 16, Eldem discloses an article of footwear (10), the article of footwear comprising: a heel region including a posterior end of the article of footwear, a mid-foot region, and a forefoot region including an anterior end of the article of footwear (Fig. 1); and a midsole having: a first cushioning element (110) extending from the posterior end to the anterior end, the first cushioning element including one or more recessed portions (150), the one or more recessed portions forming a first receiving area; and a heel clip (112) disposed adjacent to the first cushioning element in the heel region, the heel clip including: a support (upstanding wall; Fig. 5) including an inner surface having a rim extending from a first end on a medial side to a second end on a lateral side, the rim forming a first boundary of a receiving area of the heel clip; and a base (166, 170, 172) including an upper surface extending from the first end to the second end and a bottom surface extending from the first end to the second end, the upper surface including one or more raised portions (166, which is raised above supports 170, 172) and forming a second boundary of the receiving area of the heel clip, wherein the base is U-shaped, the bottom surface of the base forming a continuous surface along the U-shape (wherein support 170 is U-shaped from the medial side to the lateral side; Fig. 5), wherein the heel clip is coupled to the first cushioning element between a first segment (156) of the first cushioning element forming a first boundary of the first receiving area of the first cushioning element and a second segment (150) of the first cushioning element forming a second boundary of a second receiving area of the first cushioning element (paragraphs 0042-0043, 0066-0067, 0070, 0084-0088; Fig. 1-6).
Regarding claim 17, Eldem discloses that the heel clip is disposed in the heel region, wherein the heel clip extends from the first end on the medial side to the second end on the lateral side, the heel clip including: the base and the support together forming an outer surface of the heel clip; and a recess disposed between the support and the base within the outer surface of the heel clip (Fig. 4).
Allowable Subject Matter
Claims 6, 8, 13, 20, and 21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARON M PRANGE whose telephone number is (571)270-5280. The examiner can normally be reached M-F 8:30-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached at (571) 272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHARON M PRANGE/ Primary Examiner, Art Unit 3732
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