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amendment filed October 15, 2025 has been received, Claims 1-20 are currently pending, with Claims 4 and 14 remaining withdrawn from prosecution at this time.
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.
1. Claim(s) 1-3, 7, and 9-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tomat (US 6,092,251).
Regarding Claim 1, Tomat discloses a recovery shoe comprising: a recovery footbed (12) comprising a forefoot portion (i.e. toe region of 12) having a substantially uniform forefoot thickness (as seen in Fig.7), a heel section (i.e. heel region of 12) having a heel thickness greater than the forefoot thickness (as seen in Fig.7), and a midfoot section (i.e. midfoot region of 12) having a midfoot slope (as seen in Fig.7); a cup sole (4,8) comprising a last receiving portion (i.e. void of 4,8 that receives 3) and a peripheral sidewall (8), wherein a rearfoot height of the peripheral sidewall (i.e. heel end height of 8) is smaller than the heel thickness of the recovery footbed and a forefoot height of the peripheral sidewall (i.e. toe end height of 8) is larger than the forefoot thickness of the recovery footbed (as seen in Fig.7); and an upper (2) comprising a last (3) attached to a bottom of the upper (Col.2, lines 14-17).
Regarding Claim 2, Tomat discloses a recovery shoe of claim 1, wherein a rearfoot height of the peripheral sidewall is greater than a forefoot height of the peripheral sidewall (see annotated Figure below).
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Regarding Claim 3, Tomat discloses a recovery shoe of claim 1, wherein the upper (2) is attached to the cup sole (4,8) using one or more of a stitch, an adhesive bonding, and an adhesive bonding of the last to the last receiving portion of the cup sole (Col.2, lines 33-38).
Regarding Claim 7, Tomat discloses a recovery shoe of claim 1, wherein a material of the cup sole (4,8) comprises one of a thermoplastic rubber, a latex rubber, and a silicone rubber (Col.2, lines 19-20 & 36-38).
Regarding Claim 9, Tomat discloses a recovery shoe of claim 1, wherein the upper comprises one of a lace closure (as seen in Fig.1), and a slip-on style.
Regarding Claim 10, Tomat discloses a recovery shoe of claim 1, wherein the last (3) comprises one of a board last, a string last, a Strobel sock (Col.2, lines 14-17), or a combination thereof.
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.
2. Claim(s) 11-13, 17, 19, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tomat (US 6,092,251).
Regarding Claim 11, Tomat discloses a recovery shoe comprising: a recovery footbed (12) comprising a forefoot portion having a forefoot thickness, a heel section having a heel thickness (as seen in Fig.7), and a midfoot section having a midfoot slope (as seen in Fig.7); a cup sole (4,8) comprising a last receiving portion (i.e. void of 4,8 that receives 3) having a cup sole thickness, and a peripheral sidewall (8) having a rearfoot height, and a forefoot height (as seen in Fig.7); and an upper (2) comprising a last (3) attached to a bottom of the upper (Col.2, lines 14-17). Tomat does not disclose the recovery footbed comprising the forefoot portion having the forefoot thickness of 10–15 mm, the heel section having the heel thickness of 28–35 mm; the last receiving portion having the cup sole thickness of 5–10 mm; and the peripheral sidewall having the rearfoot height of 22–32 mm, and the forefoot height of 12–23mm. 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 provided the recovery footbed, the last receiving portion, and the peripheral sidewall of Tomat with the claimed thicknesses, in order to provide the desired sole height for support and comfort to the user when walking. Further, since the claimed values are merely an optimum or workable range, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05.
Regarding Claim 12, Tomat discloses a recovery shoe of claim 11, wherein the last (3) is attached to the upper (2) using one or more of, a stitch, and an adhesive bonding (Col.2, lines 14-17).
Regarding Claim 13, Tomat discloses a recovery shoe of claim 11, wherein the upper (2) is attached to the cup sole outsole (4,8) using one or more of a stitch, an adhesive bonding, and an adhesive bonding of the last to the last receiving portion of the cup sole (Col.2, lines 33-38).
Regarding Claim 17, Tomat discloses a recovery shoe of claim 11, wherein a material of the cup sole (4,8) comprises one of a thermoplastic rubber, a latex rubber, and a silicone rubber (Col.2, lines 19-20 & 36-38).
Regarding Claim 19, Tomat discloses a recovery shoe of claim 11, wherein the upper comprises one of a lace closure (as seen in Fig.1), and a slip-on style.
Regarding Claim 20, Tomat discloses a recovery shoe of claim 11, wherein the last (3) comprises one of a board last, a string last, a Strobel sock (Col.2, lines 14-17), or a combination thereof.
3. Claim(s) 5, 8, 15, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tomat (US 6,092,251) in view of Pyle (US 5,718,064).
Regarding Claims 5 and 15, Tomat discloses the invention substantially as claimed above. Tomat does not disclose wherein a material of the recovery footbed comprises a polyurethane (PU) foam. However, Pyle teaches a recovery footbed (16) of polyurethane (PU) foam (Col.2, lines 42-43).
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 recovery footbed material of Tomat with the polyurethane (PU) foam of Pyle, as a simple substitution of one well known type of insole material for another, in order to yield the predictable result of providing a comfortable substrate for a user to rest their foot upon.
Regarding Claims 8 and 18, Tomat discloses the invention substantially as claimed above. Tomat does not disclose wherein a material of the upper comprises one of a leather, a faux leather, a thermoplastic urethane (TPU) leather, a synthetic fabric, and a natural fabric. However, Pyle teaches a shoe upper formed of leather (Col.2, lines
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 upper material of Tomat with the leather material of Pyle, as a simple substitution of one well known type of upper material for another, in order to yield the predictable result of providing a durable upper material.
4. Claim(s) 6 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tomat (US 6,092,251)
Regarding Claims 6 and 16, Tomat discloses the invention substantially as claimed above. Tomat does not disclose wherein the recovery footbed has a shore hardness of 23–27 Shore A. 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 modified the recovery footbed of Tomat to have a shore hardness of 23–27 Shore A, in order to provide the optimum hardness to deliver enhanced support to a user’s foot. Further, since the claimed values are merely an optimum or workable range, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05.
Response to Arguments
Applicant's arguments filed October 15, 2025 have been fully considered but they are not persuasive.
5. Applicant’s Remarks: Applicant asserts Examiner has erred in interpreting the combination of the "rubber mid-sole 4", and the "peripheral cover band of crude rubber" (reference numeral 8) of Tomat, as the claimed cup sole. The Applicants have clearly defined the cup sole, in the detailed description of the present application, as a monolithic or single-piece component (see at least, para. [0043] - particularly "The cup sole 300 may be formed using, for example, injection molding, compression molding, and so forth."). Further, the single-piece construction is clearly illustrated in FIGS. 3A and 3B. The combination of mid-sole 4 and peripheral cover band of Tomat is distinct from the claimed cup sole, clearly defined in the specification of the present application.
Examiner’s Response: Examiner respectfully disagrees. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the cup sole, in the detailed description of the present application, as a monolithic or single-piece component) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Inasmuch as has been claimed by Applicant, Tomat teaches the currently claimed limitations. For these reasons, Applicant’s argument is not found persuasive
6. Applicant’s Remarks: Applicant asserts Tomat not only does not discuss the possibility of the dimensions listed in claim 11, Tomat actually teaches away from the dimensions of claim 11. Tomat states "The main object of the present invention is, therefore, to solve the technical problems referred to above, thereby eliminating the drawbacks faced with the prior art Solutions by providing a method which makes it possible to obtain a shoe which Simultaneously has a large bulk on the last and is lightweight at the same time."(Col. 1, lines 26 - 32. Emphasis added).
Examiner’s Response: Examiner respectfully disagrees and notes that Tomat does not teach away from the dimensions in claim 11. The dimensions claimed in Claim 11 are within the standard range of known sole dimensions and it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the recovery footbed, the last receiving portion, and the peripheral sidewall of Tomat with the claimed thicknesses, in order to provide the desired sole height for support and comfort to the user when walking. Further, since the claimed values are merely an optimum or workable range, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. Since the dimensions claimed are not out of a normal range for standard footwear and Tomat teaches using lightweight materials to form the sole, modifying Tomat to have such dimensions would not significantly affect the weight of the shoe. For 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached at 571-272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732