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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01-07-2026 has been entered.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1-3 and 6-16 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Claim 1 is rejected because it is positively claiming human organisms “a midsole placed in contact with the foot of a user”. This rejection may be obviated by utilizing the term “adapted to” or “configure to" prior to describing the apparatus being used with a human.
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.
Claim(s) 1-3 and 6-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee (2015/0164178) in view of Mason et al. (2018/0368516).
Regarding claim 1, Lee teaches a footwear comprising (figs 3-4): a sole (member 51); and
a midsole (member 5b and 6) placed in contact with the foot of a user said midsole having a series of zones or regions in correspondence with which a lower profile of the midsole placed in contact with said sole is emptied to form continuous recesses (member 52) defining a series of spaces (member 522) of predetermined height made between said structure and said sole,
wherein in correspondence with a first of said zones or regions there are two first portions in correspondence with which said spaces are provided in said structure wherein said spaces have a height with a curvilinear and asymmetrical course on one side and on the other with respect to a longitudinal axis of the midsole (figs 3-4).
Lee does not teach a midsole structure made of elastomer.
Mason teaches a midsole structure made of elastomer (para 0057).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to modify the footwear of Lee by using the elastomer material of Mason in order to give more flexibility to the sole.
Regarding claim 2, the modified shoe Lee-Mason discloses said zones or regions correspond to an anterior and median plantar region and to the heel region of the foot of the user (Lee, figs 3-4).
Regarding claim 3, the modified shoe Lee-Mason discloses said spaces have a substantially rectangular geometry and increasing and decreasing heights between a longitudinal axis of the midsole and the lateral ends of said zones or regions (Lee, figs 3-4).
Regarding claim 6, the modified shoe Lee-Mason discloses in correspondence with a second of said zones or regions, there are two second portions in correspondence with which said spaces are provided in said structure (Lee, figs 3-6).
Regarding claim 7, the modified shoe Lee-Mason discloses said spaces have a height with a curvilinear and asymmetrical trend on one side and on the other with respect to a longitudinal axis of the midsole (Mason, figs 3-16).
Regarding claim 8, the modified shoe Lee-Mason discloses in correspondence with a third of said zones or regions, there is a third portion in correspondence with which said spaces are provided in said structure, the height of said third portion having a curvilinear and symmetrical course on both sides with respect to said longitudinal axis of the midsole (Lee, figs 3-4 and Mason, fig 5).
Regarding claim 9, the modified shoe Lee-Mason discloses said spaces have a height in correspondence with said second and third portions which is greater with respect to said first portions (Lee, figs 3-4 and Mason figs 3-5, 17, and 19).
Regarding claim 10, the modified shoe Lee-Mason discloses said spaces are defined by said continuous recesses formed in said lower profile of the midsole rather than by individual discrete structural elements extending from said structure (Lee, figs 3-4).
Regarding claim 11, the modified shoe Lee-Mason discloses said smooth curvilinear course of the height of said spaces defines a continuously-varying profile without angular or stepped transitions (Lee, figs 3-4).
Regarding claim 12, the modified shoe Lee-Mason discloses said emptying of the lower profile creates said continuous recesses such that said elastomer portions of said structure overlying said spaces are adapted to deform into said spaces under the weight of the user (Mason, para 0057).
Regarding claim 13, the modified shoe Lee-Mason discloses said spaces extend continuously along a transverse direction of the midsole within each of said zones or regions (Lee, figs 3-4 and Mason figs 3-19).
Regarding claim 14, the modified shoe Lee-Mason discloses said zones or regions having said spaces are separated by intermediate regions substantially free of said spaces, said intermediate regions including a plantar fascia located between said first zone and said second zone, a fascia substantially corresponding to a cambril of the footwear, and a posterior fascia to a heel region (Lee, figs 3-4 and Mason figs 3-19).
Regarding claim 15, the modified shoe Lee-Mason discloses said emptying comprises removing material from a continuous surface of said lower profile to form said continuous recesses defining said spaces of predetermined height (Lee, figs 3-4).
It is noted that the lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). Office personnel should note that reliance on the alternative grounds of 35 U.S.C. 102 or 35 U.S.C. 103 does not eliminate the need to explain both the anticipation and obviousness aspects of the rejections. MPEP 2113.
Regarding claim 16, the modified shoe Lee-Mason discloses said curvilinear and asymmetrical course is a smooth curvilinear and asymmetrical course (Lee, figs 3-4 and Mason figs 3-19).
Response to Arguments
Applicant’s arguments, filed 01-7-2026, with respect to claim(s) 1-3 and 6-16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon, is listed on the attached PTO-892.
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BAO-THIEU L. NGUYEN
Primary Examiner
Art Unit 3732
/BAO-THIEU L NGUYEN/ Primary Examiner, Art Unit 3732