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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 60-67 in the reply filed on 05-08-2025 is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03-03-2024 is acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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) 60-62 and 66-67 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stephan (1,195,866) in view of Laporte (2007/0163148).
Regarding claim 60, Stephan teaches a footwear traction device comprising at least one traction member having a top surface, a bottom surface, and a periphery, the traction member (fig 2) comprising
at least one layered section having at least a bottom layer comprised of a first material (bottom layer) and an adjacent layer disposed above the bottom layer comprised of a second material (top layer),
at least one first cleat (member 2) comprising a first portion (top portion) and a second portion (bottom portion), wherein at least a portion of said second portion extends outward from the bottom surface (fig 3),
characterized in that said first portion of the cleat is at least partially embedded within the bottom layer and the first material occupies the space between the first portion of the at least one first cleat and the adjacent layer (figs 2-3 shows that member 2 top portion is covered by the layers).
Stephan does not teach the first material is softer than the second material.
Laporte teach a footwear having a bottom layer (bottom layer of member 200) having first material is softer than top layer (member 202) which comprises the second material (Fig. 9b, paragraph 0084).
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 structure of Stephan, by using the material of Laporte in order to provide more flexible and traction to the outsole and more comfort between the cleat and user's foot.
Regarding claim 61, the modified footwear Stephan-Laporte discloses the first cleat comprises a radially projecting flange (Stephan, enlarged head 3) embedded within the bottom layer (figs 2-3)
and/or wherein the first cleat comprises a first end located in the first portion, wherein the first end is spaced apart from the adjacent layer an amount between about 0.5 mm to about 3.0 mm and/or the first portion of the first cleat is a stud holder comprising a first end and a second end, the stud holder at the first end having a radially projecting flange, and the stud holder at the second end having a hole extending at least partially therethrough and configured to receive the second portion, the second portion being a traction stud and/or the hardness of the first material is in the range of about Shore 55A to about Shore 95A, or is within a corresponding range on a different scale and/or the hardness of the second material is about at least Shore 40D, or has a similar minimum hardness on a different scale (the claim used an optional limitation “or” therefore, the limitations would be treated on the merit).
Regarding claim 62, the modified footwear Stephan-Laporte discloses at least one second cleat that protrudes from the top surface (Stephan, figs 2-3)
or wherein the traction device further comprises at least one second cleat that protrudes from the top surface said second cleat being integrally molded with the adjacent layer or wherein the traction device further comprises at least one second cleat that protrudes from the top surface, where the second cleat is disposed over the top of the first cleat (the claim used an optional limitation “or” therefore, the limitations after the phrase “or” will not be treated on the merit).
Regarding claim 66, the modified footwear Stephan-Laporte teaches all of the claim limitations except the adjacent layer is a first pressure dispersing layer and/or the bottom layer is at least one force absorption layer. However, it would have been obvious to one of ordinary skill in the art to understand that rubber can disperse the pressure. In addition the claim used an optional limitation “or” therefore, the limitations after the “or” will not be treated on the merit.
Regarding claim 67, the modified footwear Stephan-Laporte the adjacent layer defines the top surface of the traction member and/or the bottom layer defines the bottom surface of the traction member (figs 2-3).
Claim(s) 63 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stephan (1,195,866) and Laporte (2007/0163148) as applied to claim 60 above, and further in view of Allen et al. (5,987,783).
Regarding claim 63, the modified footwear Stephan-Laporte teaches all limitations of the claim except a polymeric traction element that protrudes from the bottom surface or wherein the traction device further comprises a polymeric traction element that protrudes from the bottom surface which is integrally molded with the bottom layer or which is a surface projection surrounding the first cleat or which is a stepped or sloping surface projecting feature or wherein the polymeric traction element spans a width that is at least 3 times the width of the second portion of the first cleat.
Allen further teaches a polymeric (i.e. TPU) traction element (figs 6-7, member 54) that protrudes from the bottom surface, wherein the polymeric traction element is & Surface projection surrounding the first cleat (Figs. 6-7, member 403),
or wherein the traction device further comprises a polymeric traction element that protrudes from the bottom surface which is integrally molded with the bottom layer or which is a surface projection surrounding the first cleat or which is a stepped or sloping surface projecting feature or wherein the polymeric traction element spans a width that is at least 3 times the width of the second portion of the first cleat (the claim used an optional limitation “or” therefore, the limitations after the phrase “or” will not be treated on the merit).
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 modified structure Stephan-Laporte by using a polymeric traction element as taught by Allen, in order to provide a stable, but cheaper structure for a user.
Claim(s) 64-65 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stephan (1,195,866) and Laporte (2007/0163148) as applied to claim 60 above, and further in view of Johns et al. (2011/0258878).
Regarding claim 64, the modified footwear Stephan-Laporte teaches all limitations of the claim except the traction device comprises at least four connecting arms, each arm extending from the periphery of the traction member and terminating at a distal end such that the four arms and the traction member form an X-like outline and each connecting comprising an attachment feature near the distal end configured to couple the connecting arms to a footwear securing member.
Jones teaches a traction device (Fig. 7, member 22} comprises at least four connecting arms (Fig. 7, member 18i-g), each arm extending from the periphery of the traction member and terminating at a distal end such that a first set of two arms are substantially opposite each other and a second set of two arms are substantially opposite each other and each connecting comprising an attachment feature near the distal end configured to couple the connecting arms to a footwear securing member (Fig. 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claim invention to modify the modified structure Stephan-Laporte- Hubbard by adding the two more arms in the front of the device, as taught by Jones, in order to provide an easier fastener to attach the device around a user feel.
Regarding claim 65, the modified footwear Stephan-Laporte-Johns teaches all limitations of the claim and John further teaches the footwear securing member, wherein the footwear securing comprises an elastomeric band configured to fit around the footwear along an upper, front portion, a left side portion, a heel portion, and a right side portion or wherein the attachment feature comprises a through hole (fig 6, para 0016). 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 structure of Stephan by using adding the elastomeric band and through hole, as further taught by Johns, in order to provide an easier fastener to attach the device around a user feet.
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 60-67 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10,004,298. Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim essentially the same elements as follow
Claim 60 is rejected over claims 1, 11 and 14.
Claim 61 is rejected over claims 1, 11 and 14.
Claim 62 is rejected over claims 3 and 17.
Claim 63 is rejected over claims 3 and 17.
Claim 64 is rejected over claims 7.
Claim 65 is rejected over claims 1, 11 and 14.
Claim 66 is rejected over claims 1, 11 and 14.
Claim 67 is rejected over claims 1, 11 and 14.
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