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filed March 2, 2026 has been received, Claims 1-3, 5-10, and 12-22 are currently pending, with Claims 15-21 remaining withdrawn from prosecution at this time.
Claim Objections
1. Claim 14 is objected to because of the following informalities: Claim 14 has the status identifier (Currently Amended), however, the claim does not appear to be amended and the status identifier should be (Previously Presented). Appropriate correction is required.
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.
2. Claim(s) 1, 5, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morales (US 2007/0234590).
Regarding Claim 1, Morales discloses a high-heel shoe (10) comprising: a heel of the shoe (50); and a shoe midsole comprising: a compressible soft material (46); a stiffener layer (39; para.15) extending from the heel and rear of the midsole to the arch of the midsole, the stiffener layer extending over no more than 60% of the area of the insole (as seen in Fig.1 & 3; 39 does not extend over more than 60% of the entire area of the insole); and a rigid and flexible composite laminate shank layer (30:32,33,36; para.10-12) below the stiffener layer wherein the rigid and flexible shank layer extends from the heel area of the midsole to the toe area of the midsole (as seen in Fig.1 & 3); such that the composite shank layer is less flexible in the area from the heel of the midsole to the arch of the midsole compared to the portions of the composite shank layer not coextensive with the stiffener layer (i.e. layer 30 would be less flexible where 39 is present than in the areas in which 39 is not present).
Regarding Claim 5, Morales discloses a high-heel shoe of claim 1 wherein the rigid and flexible shank layer (30:32,33,36) and stiffener (39) are attached as one piece (para.16 & 20).
Regarding Claim 7, Modified Morales discloses a high-heel shoe of claim 1, wherein the portions (32,33) of the composite shank layer (30:32,33,36) not coextensive with the stiffener layer (39) are capable of bending in one direction, upwards, and not downwards (as seen in Fig.3; portions of 32 & 33 are capable of bending upwards and not downward during walking).
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.
3. Claim(s) 2-3, 6, 8-10, and 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morales (US 2007/0234590) in view of Duclos (US 4,463,505).
Regarding Claim 2, Morales discloses a high-heel shoe of claim 1 comprising a first material layer (40; para.16) below the compressible soft material (46). Morales does not explicitly disclose the first material layer being formed of fiberboard; and a second fiberboard material layer below the rigid and flexible composite shank layer. However, Duclos teaches a sole having a layer (26) formed of fiberboard material (Col.2; lines 35-36); and a second support material layer (39; Col.2, line 57) below a rigid and flexible composite shank layer (17).
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 substituted the material of the first material layer of Morales for the fiberboard material of Duclos, as a simple substitution of one well known type of support layer material for another, in order to yield the predictable result of providing a durable sole layer of support material. Further, 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 sole of Morales to include a second support material layer below the shank layer, as taught by Duclos, in order to provide a sole that is durable and supportive, while also delivering a flexible comfort to the user’s stride.
Morales and Duclos disclose the invention substantially as claimed above. Morales and Duclos do not disclose the second support material layer being fiberboard. 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 substituted the iron rubber layer of Duclos for fiberboard, as a simple substitution of one well known type of support layer material for another, in order to yield the predictable result of providing a durable sole layer of support material. Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07. When in combination, Morales and Duclos teach the second fiberboard material layer below the rigid and flexible composite shank layer, and the first fiberboard material layer and second fiberboard material layer enclosing the stiffener layer and shank layer.
Regarding Claim 3, When in combination, Morales and Duclos teach a high-heel shoe of claim 2, wherein the first fiberboard material layer (of modified Morales) is attached to the second fiberboard material layer (of Duclos) at the periphery of the first fiberboard material layer (Duclos: Col.3, lines 11-15; as seen in Fig.1).
Regarding Claim 6, Modified Morales discloses a high-heel shoe of claim 2, wherein the first fiberboard material layer (40) extends beyond the width of the stiffener layer (39)(as seen in Fig.3). Morales does not disclose the first fiberboard material layer extends beyond the width of the shank layer. However, Duclos teaches a fiberboard layer (26) extending beyond the width of the shank layer (17)(Col.3, lines 11-15; as seen in Fig.1, rib 28 which extends around the periphery of 26 is wider than 17 & 18 as it encapsulates 17 & 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 formed the first fiberboard material layer of modified Morales to extend beyond the width of the shank layer, as taught by Duclos, in order to provide a sole structure that can be securely attached to the shoe upper. Further, it would have been an obvious matter of design choice to formed the first fiberboard material layer of Morales wider than the shank layer, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04.
Regarding Claims 8-9, Morales discloses a high-heel shoe (10) comprising: a compressible material layer (46); a first material layer (40); a composite laminate shank layer (30:32,33,36; para.10-12) below a stiffener layer (39; para.15) wherein the shank layer extends from the heel area of the shoe to the toe area of the shoe (as seen in Fig.1 & 3); and the stiffener layer extending from the heel and rear of the shoe to the arch of the shoe and extending over no more than 60% of the area of the composite shank layer (as seen in Fig.1 & 3; 39 does not extend over more than 60% of the entire area of the insole); wherein the stiffener layer is positioned between the first material layer and the shank layer (as seen in Fig.1), such that the composite shank layer is less flexible in the area from the heel to the arch of the midsole compared to the portions of the composite shank layer not coextensive with the stiffener layer (i.e. layer 30 would be less flexible where 39 is present than in the areas in which 39 is not present). Morales does not disclose the first material layer is formed of fiberboard. However, Duclos teaches a sole having a layer (26) formed of fiberboard material (Col.2; lines 35-36); and a second support material layer (39; Col.2, line 57) below a rigid and flexible shank layer (17).
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 substituted the material of the first material layer of Morales for the fiberboard material of Duclos, as a simple substitution of one well known type of support layer material for another, in order to yield the predictable result of providing a durable sole layer of support material. Further, 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 sole of Morales to include a second support material layer below the shank layer, as taught by Duclos, in order to provide a sole that is durable and supportive, while also delivering a flexible comfort to the user’s stride.
Morales and Duclos disclose the invention substantially as claimed above. Morales and Duclos do not disclose the second support material layer being fiberboard. 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 substituted the iron rubber layer of Duclos for fiberboard, as a simple substitution of one well known type of support layer material for another, in order to yield the predictable result of providing a durable sole layer of support material. Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07. When in combination, Morales and Duclos teach wherein the stiffener layer is positioned between the first fiberboard material layer and the shank layer, the second fiberboard material layer below the rigid and flexible composite shank layer, and the first fiberboard material layer and second fiberboard material layer forming a sandwich around the stiffener layer and shank layer.
Regarding Claim 10, When in combination, Morales and Duclos teach a high-heel shoe of claim 9, wherein the first fiberboard material layer (of modified Morales) is attached to the second fiberboard material layer (of Duclos) at the edge of the first fiberboard material layer (Duclos: Col.3, lines 11-15; as seen in Fig.1).
Regarding Claim 12, Morales discloses a high-heel shoe of claim 8 wherein the
shank layer (30:32,33,36) and stiffener (39) are attached as one piece (para.16 & 20).
Regarding Claim 13, Modified Morales discloses a high-heel shoe of claim 8, wherein the first fiberboard material layer (40) extends beyond the width of the stiffener layer (39)(as seen in Fig.3). Morales does not disclose the first fiberboard material layer extends beyond the width of the shank layer. However, Duclos teaches a fiberboard layer (26) extending beyond the width of the shank layer (17)(Col.3, lines 11-15; as seen in Fig.1, rib 28 which extends around the periphery of 26 is wider than 17 & 18 as it encapsulates 17 & 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 formed the first fiberboard material layer of modified Morales to extend beyond the width of the shank layer, as taught by Duclos, in order to provide a sole structure that can be securely attached to the shoe upper. Further, it would have been an obvious matter of design choice to formed the first fiberboard material layer of Morales wider than the shank layer, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04.
Regarding Claim 14, Morales discloses a high-heel shoe of claim 8, wherein the portions (32,33) of the composite shank layer (30:32,33,36) not coextensive with the stiffener layer (39) are capable of bending in one direction, upwards, and not downwards (as seen in Fig.3; portions of 32 & 33 are capable of bending upwards and not downward during walking).
4. Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morales (US 2007/0234590) in view of Cuini (US 2016/0324256).
Regarding Claim 22, Morales discloses the invention substantially as claimed above. Morales does not disclose wherein the shank layer comprises carbon fiber. However, Cuini teaches a midsole shank layer being formed from carbon fiber composite or leather, reinforced cardboard, plastics, or of a thin metal plate (para.71 & 88).
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 substituted the cardboard composite shank layer of Morales for the carbon fiber composite of Cuini, as a simple substitution of one well known shank layer material for another, in order to yield the predictable result of a supportive shank layer for a user’s foot.
Response to Arguments
Applicant's arguments filed March 2, 2026 have been fully considered but they are not persuasive.
Applicant asserts Morales says nothing about the capabilities of the insole or bending, and nothing in Morales suggests a lack of ability to bend downwards.
Examiner respectfully disagrees and notes that, inasmuch as has been claimed by Applicant, Morales is “capable” of bending in one direction, upwards, and not downwards; as seen in Fig.3 of Morales, portions of 32 & 33 are capable of bending upwards and not downward during walking. Morales teaches the claimed structural limitations and, therefore, would be capable of performing the claimed function. Applicant has not amended the claims to specify any structure that would read over the prior art. For these reasons, Applicant’s argument is not found persuasive.
In view of Applicant's amendment, the search has been updated, and newly modified grounds of rejection and new prior art have been identified and applied. Applicant's arguments, which are drawn solely to the newly amended limitations, have been considered but are moot in view of the newly modified ground(s) of rejection and new grounds of rejection.
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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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732
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