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 1-10 and 12 has been received, Claims 1-10 and 12 are currently pending.
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.
1. Claim(s) 1-10 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Byrne (US 2008/0127518) in view of Levy (US 2,288,199).
Regarding Claim 1, Byrne discloses a footbed system comprising: a footbed (30) having a first length; and a removeable foot support (60) defining a base having a height and having a second length that is less than the first length of the footbed (as seen in Fig.2); wherein the footbed system comprises a first configuration with the removeable foot support (i.e. when 60 is attached to 30); wherein the footbed system comprises a second configuration without the removeable foot support (i.e. when 60 is removed from 30); wherein a shoe (10) into which the footbed system is placed accommodates a larger foot girth in the second configuration than in the first configuration due to the height added by the removeable foot support in the first configuration (as seen in Fig.1; para.53 & 64-65). Byrne does not disclose a bumper extending from a forward edge of the base of the removeable foot support to define an interior side wall of the bumper that extends vertically from the base, the bumper having a thickness and a height. However, Levy teaches a footbed (16,17) with a removable foot support (10) comprising a bumper (11) extending from a forward edge of the base of the removeable foot support to define an interior side wall (i.e. interior surface of 11 facing user’s toes) of the bumper that extends vertically from the base, the bumper having a thickness and a height (as seen in Fig.1 & 4).
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 removeable foot support of Byrne to have a bumper, as taught by Levy, in order to provide a foot support that delivers increased protection to a user's toes for enhanced comfort during use. When in combination, Byrne and Levy teach wherein the shoe accommodates a larger foot length in the second configuration than in the first configuration due to the thickness added by the bumper in the first configuration.
Regarding Claim 2, Modified Byrne discloses a footbed system of claim 1, wherein the removable foot support is configured to be positioned adjacent and overlying an upper surface of the footbed (Byrne: Fig.1 & 2 and Levy: Fig.1 & 4; i.e. 11 of Levy overlies an upper surface of the footbed).
Regarding Claim 3, Modified Byrne further discloses a footbed system of claim 1, wherein the removable foot support (60) is configured to be positioned adjacent and underlying a lower surface (34) of the footbed (30) and the bumper is configured to extend from below the footbed to above the footbed (Byrne: Fig.1 & 2 and Levy: Fig.1 & 4).
Regarding Claim 4, Byrne discloses a footbed system of claim 1, wherein the removable foot support (60) is coupled to the footbed (30) with one of peel off adhesion and hook and loop fasteners (45/74; para.69-70, as seen in Fig.3).
Regarding Claim 5, Byrne discloses a footbed system of claim 1, wherein the removeable foot support (60) is tapered at or toward a rearward edge of the removeable foot support (i.e. second & third 60 from 30 in Fig.6 taper toward a rear edge) to create a smooth transition between the removeable foot support and the footbed to facilitate underfoot comfort (as seen in Fig.4 & 6).
Regarding Claim 6, Levy further teaches a footbed system of claim 1, wherein the bumper has a bumper height greater than a height of the footbed (as seen in Fig.1 & 4).
Regarding Claim 7, Byrne discloses a kit for adjusting the size or fit of a shoe comprising: a footbed (30); a removeable foot support (60); and an alternate removeable foot support (second 60); wherein the footbed system comprises a second configuration with the alternate removeable foot support having a portion of the alternate removeable foot support position vertically lower than the footbed (as seen in Fig.6); wherein a shoe (10) into which the footbed system is placed has a different size or fit in the second configuration than in the first configuration (as seen in Fig.1; para.53 & 64-65); and wherein the removeable foot support is tapered at or toward a rearward edge of the removeable foot support (i.e. second & third 60 from 30 in Fig.6 taper toward a rear edge) to create a smooth transition between the removeable foot support and the footbed (as seen in Fig.4 & 6). Byrne does not disclose the removeable foot support further comprising a bumper; wherein a footbed system comprises a first configuration with the removeable foot support positioned above the footbed. However, Levy teaches a footbed (16,17) with a removable foot support (10) comprising a bumper (11), wherein a footbed system comprises a first configuration with the removeable foot support positioned above the footbed (i.e. 11 of Levy overlies an upper surface of the footbed) and the bumper positioned vertically higher than the footbed (as seen in Fig.1 & 4).
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 removeable foot support of Byrne to have a bumper, as taught by Levy, in order to provide a foot support that delivers increased protection to a user's toes for enhanced comfort during use. When in combination, Byrne and Levy teach an alternate removeable foot support comprising a second bumper and a portion of the second bumper positioned vertically higher than the footbed.
Regarding Claim 8, Byrne discloses a kit of claim 7, wherein the removable foot support is configured to be positioned adjacent and overlying an upper surface of the footbed (Byrne: Fig.1 & 2 and Levy: Fig.1 & 4; i.e. 11 of Levy overlies an upper surface of the footbed).
Regarding Claim 9, Modified Byrne further discloses a kit of claim 7, wherein the removable foot support (60) is configured to be positioned adjacent and underlying a lower surface (34) of the footbed (30) and the bumper is configured to extend from below the footbed to above the footbed (Byrne: Fig.1 & 2 and Levy: Fig.1 & 4).
Regarding Claim 10, Byrne discloses a kit of claim 7, wherein the removable foot support (60) is coupled to the footbed (30) with one of peel off adhesion and hook and loop fasteners (45/74; para.69-70, as seen in Fig.3).
Regarding Claim 12, Levy further teaches a kit of claim 7, wherein the bumper has a bumper height greater than a height of the footbed (as seen in Fig.1 & 4).
Response to Arguments
Applicant's arguments filed August 4, 2026 have been fully considered but they are not persuasive.
2. Applicant’s Remarks: Applicant asserts Levy is non-analogous art. Under the two-prong test for analogous art established in In re Bigio, 381 F.3d 1320 (Fed. Cir. 2004), a reference qualifies as prior art for obviousness purposes only if it is (1) from the same field of endeavor as the claimed invention, or (2) reasonably pertinent to the particular problem faced by the inventor. Levy fails both prongs. As to the first prong, Applicant's field of endeavor is removable footbed systems for adjusting the internal dimensional accommodation of a shoe; that is, enabling a single shoe to accommodate varying foot girths and lengths through insertion and removal of a foot support. Levy's field of endeavor is rigid protective toe guards for shielding toes from external impacts, which is more closely related to personal protective equipment than to footwear fit adjustment. As to the second prong, the particular problem faced by the inventor is enabling adjustable fit through a removable foot support with an integrated bumper whose thickness reduces available length accommodation in one configuration. Levy does not address this problem; it addresses protection from external forces applied to the toe area.
Examiner’s Response: Examiner respectfully disagrees. In response to applicant's argument that Levy is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Levy is drawn to a removable insole/footbed, which is in the field of the inventor’s endeavor. Levy is also reasonably pertinent to the particular problem with which the inventor was concerned of providing a toe bumper. It is additionally noted that Applicant’s assertion that Levy is drawn to rigid protective toe guards for shielding toes from external impacts, is wholly misleading, as Levy explicitly teaches on Pg.1, Col. 2, lines 53-56 an “elastic nonporous body portion 10 which is preferably shaped to conform to the toe area and forward portion of the wearer's foot” and on Pg.2, Col.1, lines 15-17 “the customer's foot will not contact with the toe area or forward portion of the shoe”. Nowhere in Levy is there mention of a rigid toe guard for protecting toes from impacts. For all of these reasons, Applicant’s argument is not found persuasive.
3. Applicant’s Remarks: Applicant asserts the combination relies on impermissible hindsight. The Office Action's stated motivation (comfort and support/protection) lacks the required particularized reasoning because neither Byrne nor Levy identifies any deficiency in comfort or protection that would prompt a skilled artisan to combine these references. Byrne does not suggest its wedge member lacks protection; Levy does not suggest its protector should be made removable or integrated into a sizing system.
Examiner’s Response: Examiner respectfully disagrees. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Both Bryne and Levy take into account only knowledge which was within the level of ordinary skill as both references teach removable insoles/footbeds and modifying the insole of Bryne to include the toe bumper of Levy would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention in order to provide a foot support that delivers increased protection to a user's toes for enhanced comfort during use. The combination does not include knowledge gleaned only from the applicant's disclosure, therefore, such a reconstruction is proper and the Office did not engage in improper hindsight reasoning. For all of these reasons, Applicant’s argument is not found persuasive.
4. Applicant’s Remarks: Applicant asserts that Levy teaches away from the proposed combination. The protector body 10 of Levy is a rigid, permanent feature of the shoe designed to remain fixed in place at all times to provide continuous toe protection. A person of ordinary skill, upon reading Levy, would be discouraged from integrating its rigid, permanent protector into a component that is specifically designed to be repeatedly inserted and removed by the user. Combining Levy's rigid protective structure with Byrne's removable wedge member would mean that the toe protection disappears every time the user removes the wedge to accommodate a larger foot, directly contradicting Levy's design objective of continuous protection.
Examiner’s Response: Examiner respectfully disagrees and notes that Applicant can see the response above regarding Levy not being rigid. Additionally, Applicant’s assertion that Levy is permanent is not found persuasive as Levy clearly teaches removing the protector on Pag.2, Col.2, lines 60-61. Applicant’s argument that combining Levy's rigid protective structure with Byrne's removable wedge member would mean that the toe protection disappears every time the user removes the wedge to accommodate a larger foot, directly contradicting Levy's design objective of continuous protection is confusing and not relevant, as Applicant’s own invention shows removing the wedge and toe bumper. Further, Levy is the secondary reference and was merely used to teach adding a toe bumper to the wedge of Bryne. In no way does Levy teach away from the combination. For all of these reasons, Applicant’s argument is not found persuasive.
5. Applicant’s Remarks: Applicant asserts the proposed modification destroys Bryne’s principle of operation. If one were to attempt the proposed combination, the logical result would be to modify the insole 30 of Byrne to include the protector body 10 of Levy so that it is not removed from the shoe and the protection would be maintained even when the wedge member 60 is removed. This underscores that the Office Action's proposed modification (i.e., attaching a rigid protective structure to the removable wedge member) is contrary to the teachings of both references. Moreover, adding a rigid bumper to the wedge member would impede the smooth insertion and removal that is central to Byrne's functionality, effectively destroying Byrne's principle of operation.
Examiner’s Response: Examiner respectfully disagrees. Applicant argues that adding a rigid bumper to the wedge member of Bryne would impede the smooth insertion and removal that is central to Byrne's functionality, effectively destroying Byrne's principle of operation. Once again, Applicant’s assertion is wholly misleading, Bryne does not discuss anywhere in the reference that their principle of operation is smooth insertion and removal of the insole. Further, as Levy is smoothly inserted and removed from a shoe, it would in no way destroy Bryne’s “principle of operation”; if that were in fact Bryne’s “principle of operation”. It is noted that Bryne’s principle of operation is an adjustable shoe footbed system which allows for varying the width of a shoe. For all of these reasons, Applicant’s argument is not found persuasive.
6. Applicant’s Remarks: Applicant asserts the combination fails to arrive at the claimed invention. Claim 1 recites that the bumper's thickness specifically functions to reduce the shoe's accommodation of foot length in the first configuration (i.e., the bumper is not merely a protective element but is a dimensional control feature integrated into the removable foot support's fit-adjustment system). Levy's protector body serves no such dual function. It is not described as reducing available shoe cavity length when installed or increasing it when removed. The functional integration recited in the claims is neither taught nor suggested by either reference individually or in combination.
Examiner’s Response: Examiner respectfully disagrees and notes that simply because Levy does not explicitly mention reducing shoe cavity length when installed, does no mean this function is not provided. The toe bumper of Levy has a thickness and that thickness would absolutely reduce the shoe cavity length when installed. Therefore, the functional integration recited in Claim 1 is taught and the combination of reference do arrive at the claimed invention. For all of these reasons, Applicant’s argument is not found persuasive.
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.
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
