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 .
Election/Restrictions
Applicant’s election without traverse of Group I, species I and species B in the reply filed on 5/8/2026 is acknowledged.
Claim 5 and 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/8/2026.
To the extent that the withdrawn claims get rejoined, applicant should amend them during prosecution. Accordingly, if the independent claim is no longer generic then applicant is encourage to cancel the withdrawn claims.
Claim Rejections - 35 USC § 112
Claims 2-4 and 6-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
The scope of claim 2 is not understood, the structure that corresponds with “Morton’s” is not known and therefore is unclear and indefinite.
In claim 3, it is not clear how this claim further limits the claimed foot support inasmuch it the claim is filled with functional language and doesn’t appear to add any additional structure to the claim.
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 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.
Claim(s) 1-4, 6-8 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 4779361 (Kinsaul).
Regarding claims 1-4, 6-8 and 10, Kinsaul discloses a foot support (sole 14), comprising:
a support portion (portion of the sole 14, e.g. from the transverse slat 22 to the heel of the sole);
an extension portion (portion of plate 16; defined by transverse slat 22 and longitudinal flex groove 29; in the region that corresponds with the metatarsal region of the user’s foot) extending from the support portion, where the extension portion is integral with the support portion; and at least one closable opening formed in the foot support (e.g. openings between slats 22), where upon flexing of the foot support by application of a bending force between the support portion and the extension portion, closure of the at least one opening is to prevent further flexing of the foot support beyond a specified angle range (see figure 5 showing the full flexion position).
Regarding claim 2, as understood, the structure as taught above teaches a Morton’s extension as claimed.
Regarding claim 3, as understood, the sole as taught above has all the structure as claimed and is inherently capable of performing the functional language as claimed.
Regarding claim 4, see figures 2-9.
Regarding claim 6, at least see figures 2-9 showing at least 3 dimensions (i.e. a length, width, and height of the closable opening).
Regarding claim 7, as understood, see figures 6-7 showing a full angle range of the sole.
Regarding claim 8, first dimension is the opening distance between adjacent slats (22,22); second dimension is the width of the opening between adjacent longitudinal lines 29, the lines preferably closest to the first metatarsal; and the third dimension is the height of the sole between the top surface of the sole and the bottom surface of the sole.
Regarding claim 10, see figure 5 and col. 4, lines 6-15.
Claim Rejections - 35 USC § 103
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 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kinsaul ‘361 in view of official notice.
Kinsaul lacks teaching the foot support produced by additive manufacturing. The examiner takes official notice that it is old and conventional in the art to construct foot support, such as soles, out of additive manufacturing inasmuch as additive manufacturing offers cost saving, design flexibility, and the ability to produce complex, lightweight, and customized parts. Therefore, It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct the foot support as taught above out of additive manufacturing to facilitate producing customized foot support structure.
Allowable Subject Matter
Claim 9 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art cited and not relied upon by the Examiner for the above rejections are considered to be pertinent in that the references cited are considered to be the nearest prior art to the subject matter defined in the claims as required by MPEP707.05.
Applicant is duly reminded that a complete response must satisfy the requirements of 37 C.F. R. 1.111, including:
-“The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.”
--“A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.”
-Moreover, “The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP 2163.06” MPEP 714.02. The “disclosure” includes the claims, the specification and the drawings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TED KAVANAUGH whose telephone number is (571) 272-4556. The examiner can normally be reached on Monday-Thursday 8AM-6PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule a telephone interview, applicant is encouraged to call the examiner. Normally telephone interviews can quickly be scheduled. For other types of interviews, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached on 57-1272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Ted Kavanaugh/
Primary Patent Examiner
Art Unit 3732
Tel: (571) 272-4556
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