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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/01/2026 has been entered.
Claims 1, 17, 19, and have been amended, claims 1-7 and 11-20 remain pending, and claims 7 and 11-12 are withdrawn from consideration in this application.
Drawings
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6, 13-18, and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, there is no support in the original specification for at least one of the shielding arch members having the greater hardness than the pad body from end to end of the pad body. The written description is silent regarding this limitation, and the drawings do not appear to show the shielding arch members extending from end to end of the pad body (see Fig. 7, where the arch members appear to end above the side edge of the pad body).
Regarding claim 20, there is no support in the original specification for at least one of the shielding arch members forming a U shape entirely made of the second material from end to end of the U shape. The written description is silent regarding the material of the entirety of the U shape, and the drawings cannot be used to determine material composition.
Claim 2-6 and 13-18 depend from rejected claim 1.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 4-6, and 13-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Krajcir (US 6,389,715).
Regarding claim 1, Krajcir discloses a metatarsal protective arch comprising: a pad body (19, 21); and shielding arch members (14, 16, 18) connected to the pad body, at least two adjacent ones of the shielding arch members being separate parts and being spaced from one another by the pad body (Fig. 2-3); the at least one of the shielding arch members having a single arc shape from the end to end; wherein the at least two adjacent ones of the shielding arch members being spaced and separated from one another are hinged relative to one another by the pad body (column 6, lines 16-21; Fig. 2-3); wherein the pad body and the at least one shielding arch member concurrently form an arch configured to straddle at least part of a metatarsal region of a foot (Fig. 1-2); and wherein the metatarsal protective arch is configured to be positioned in a foot-receiving cavity of an upper of an item of footwear (column 6, line 1-column 7, line 10; Fig. 1-3).
Krajcir discloses that the arch member is formed of a hard plastic material (column 8, line 42-column 9, line 10) and the pad body is formed of a soft material (column 6, lines 19-23), but does not specifically disclose the relative hardnesses. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the shielding arch members with a greater hardness than the pad body; in order to provide a rigid guard which protects the foot and a pad body which improves comfort. The at least one of the shielding arch members has the greater hardness (hard plastic material) than the pad body from end to end of the pad body (Fig. 2, 3).
Regarding claim 4, Krajcir does not disclose the specific hardness of the pad body. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the pad body with a hardness of Shore A 35-40 in order provide a pad body with sufficient cushioning and durability. 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. In re Aller, 105 USPQ 233.
Regarding claim 5, Krajcir discloses that the shielding arch members are made of a thermoplastic polyurethane, polyether block amide, nylon, polypropylene or polycarbonate (column 8, lines 48-52).
Regarding claim 6, Krajcir appears to disclose that the pad body and the shielding arch members have different densities (wherein the pad body is a soft material and the arch members are a hard plastic), but does not disclose the specific relative densities. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the shielding arch members with a greater density than the pad body; in order to provide a rigid guard which protects the foot and a pad body which improves comfort.
Regarding claim 13, Krajcir discloses that the shielding arch members are on a top surface of the pad body (Fig. 2-3).
Regarding claim 14, Krajcir discloses that the shielding arch members are adhered with the pad body (column 6, lines 18-21).
Regarding claim 15, Krajcir discloses that ends of one or more of the shielding arch members are configured to contact a floor of the item of footwear (column 7, lines 7-10; Fig. 3).
Regarding claim 16, Krajcir discloses that the ends of one or more of the shielding arch members flare in a downward direction (Fig. 2).
Regarding claim 17, Krajcir discloses an upper (10) mounted to a sole (12, 20), the upper and the sole forming a foot-receiving cavity; and the metatarsal protective arch according to claim 1; wherein ends of the one or more shielding arch members contact a floor of the item of footwear (column 7, lines 7-10; Fig. 3).
Regarding claim 18, Krajcir discloses that the metatarsal protective arch is located in the foot receiving cavity (Fig. 3).
Regarding claim 19, Krajcir discloses a metatarsal protective arch comprising: a pad body (19, 21); and shielding arch members (14, 16, 18) connected to the pad body, at least two adjacent ones of the shielding arch members being separate parts and being spaced from one another by the pad body whereby the at least two adjacent ones of the shielding arch members are only interconnected by the pad body (Fig. 2-3); wherein the at least two adjacent ones of the shielding arch members being spaced and separated from one another are hinged relative to one another by the pad body (column 6, lines 16-21; Fig. 2-3); wherein the pad body and the at least one shielding arch member concurrently form an arch configured to straddle at least part of a metatarsal region of a foot (Fig. 1-3); wherein the at least one of the shielding arch members forming the arch is undisrupted from end to end (Fig. 2); and wherein the metatarsal protective arch is configured to be positioned in a foot-receiving cavity of an upper of an item of footwear (column 6, line 1-column 7, line 10; Fig. 1-3).
Krajcir discloses that the arch member is formed of a hard plastic material (column 8, line 42-column 9, line 10) and the pad body is formed of a soft material (column 6, lines 19-23), but does not specifically disclose the relative hardnesses. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the shielding arch members with a greater hardness than the pad body; in order to provide a rigid guard which protects the foot and a pad body which improves comfort.
Regarding claim 20, Krajcir discloses a metatarsal protective arch comprising: a pad body (19, 21) made of a first material; and shielding arch members (14, 16, 18) made of a second material, the shielding arch members being connected to the pad body, at least two adjacent ones of the shielding arch members being spaced and separated from one another by the pad body whereby a space between the at least two adjacent ones of the shielding arch members is without the second material (Fig. 2-3); wherein at least one of the shielding arch members forms a U shape entirely made of the second material from end to end of the U shape (Fig. 2); wherein the at least two adjacent ones of the shielding arch members being spaced and separated from one another are hinged relative to one another by the pad body (column 6, lines 16-21; Fig. 2-3); wherein the pad body and the at least one shielding arch member concurrently form an arch configured to straddle at least part of a metatarsal region of a foot (Fig. 1-3); and wherein the metatarsal protective arch is configured to be positioned in a foot-receiving cavity of an upper of an item of footwear (column 2, line 53-column 3, line 58; Fig. 1-3).
Krajcir discloses that the arch member is formed of a hard plastic material (column 8, line 42-column 9, line 10) and the pad body is formed of a soft material (column 6, lines 19-23), but does not specifically disclose the relative hardnesses. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the shielding arch members with a greater hardness than the pad body; in order to provide a rigid guard which protects the foot and a pad body which improves comfort. The at least one of the shielding arch members has the greater hardness (hard plastic material) than the pad body from end to end of the pad body (Fig. 2, 3).
Claim(s) 2 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Krajcir, as applied to claim 1, in view of Bergeron (US 2019/0350307).
Regarding claim 2, Krajcir does not disclose the specific material of the pad body. Bergeron teaches a metatarsal protective arch (116) comprising: a pad body (132); and at least one shielding arch member (124, 130) connected to the pad body; wherein the pad body and the at least one shielding arch member concurrently form an arch configured to straddle at least part of a metatarsal region of a foot (paragraphs 0067-0074; Fig. 1-5). The pad body is a polyurethane, which is a resilient material (paragraph 0092). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the pad body of Krajcir of a polyurethane material, as taught by Bergeron, in order to use a resilient material which provides cushioning and comfort. 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. In re Leshin, 125 USPQ 416.
Regarding claim 3, the combination of Krajcir and Bergeron does not disclose the specific density of the polyurethane. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the polyurethane with a density of 0.45 ± 0.05 g/cm3 in order provide a pad body with sufficient cushioning and durability. 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. In re Aller, 105 USPQ 233.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 15, 19, and 20 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 considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARON M PRANGE whose telephone number is (571)270-5280. The examiner can normally be reached M-F 8:30-5 EST.
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/SHARON M PRANGE/ Primary Examiner, Art Unit 3732
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