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 .
This is in response to Applicant’s amendment in which claims 1, 5, 6, and 13-16 have been amended, claims 8-10 have been canceled, claims 19-20 have been added, claims 1-7 and 11-20 remain pending, and claims 7 and 11-12 are withdrawn from consideration.
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).
Specification
The use of the terms “Velcro®” and “Boa®” which are trade names or marks used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claims 1 and 20 are objected to because of the following informalities:
Claim 1 recites the limitation “spaced and from one another” in line 4. It appears that this limitation should read --spaced from one another--.
Claim 20 recites the limitation “the shielding arch member has” in line 7. It appears that this limitation should read --the shielding arch members have-- in order to maintain consistent claim language.
Appropriate correction is required.
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, 13, and 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gesso (US 6,170,174).
Regarding claim 1, Gesso discloses a metatarsal protective arch comprising: a pad body (14, 16); and shielding arch members (12) 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); 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 3, lines 36-40; 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); 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).
Gesso discloses that the arch member is formed of a hard plastic material (column 3, lines 10-11) and the pad body is formed of a cushion material providing comfort (column 3, lines 3-5), 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 cushioning pad body which improves comfort.
Regarding claim 4, Gesso 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 6, Gesso appears to disclose that the pad body and the shielding arch members have different densities (wherein the pad body is a cushion and the arch members are a hard plastic or metal), 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 cushioning pad body which improves comfort.
Regarding claim 13, Gesso discloses that the shielding arch members are on a top surface of the pad body (Fig. 2-3).
Regarding claim 15, Gesso discloses that ends of one or more of the shielding arch members are configured to contact a floor of the item of footwear (Fig. 1, 3).
Regarding claim 16, Gesso discloses that the ends of one or more of the shielding arch members flare in a downward direction (Fig. 3).
Regarding claim 17, Gesso discloses an upper (72) mounted to a sole (76), the upper and the sole forming a foot-receiving cavity; and the metatarsal protective arch according to claim 1 (Fig. 1).
Regarding claim 18, Gesso discloses that the metatarsal protective arch is located in the foot receiving cavity (Fig. 1).
Regarding claim 19, Gesso discloses a metatarsal protective arch comprising: a pad body (14, 16); and shielding arch members (12) 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 3, lines 36-40; 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); 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).
Gesso discloses that the arch member is formed of a hard plastic material (column 3, lines 10-11) and the pad body is formed of a cushion material providing comfort (column 3, lines 3-5), 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 cushioning pad body which improves comfort.
Regarding claim 20, Gesso discloses a metatarsal protective arch comprising: a pad body (14, 16) made of a first material; and shielding arch members (12) 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 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 3, lines 36-40; 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); 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).
Gesso discloses that the arch member is formed of a hard plastic material (column 3, lines 10-11) and the pad body is formed of a cushion material providing comfort (column 3, lines 3-5), 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 cushioning pad body which improves comfort.
Claim(s) 2, 3, 5, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gesso, as applied to claims 1 and 13, in view of Bergeron (US 2019/0350307).
Regarding claim 2, Gesso 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 Gesso 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 Gesso 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.
Regarding claim 5, Gesso does not disclose the specific plastic of the arch shielding members. Bergeron teaches that the shielding arch members may be made of thermoplastic polyurethan or nylon (paragraph 0085). 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 of Gesso of a thermoplastic polyurethane or nylon, as taught by Bergeron, in order to use a material which provides sufficient rigidity and impact resistance. 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 14, Gesso does not disclose the connection between the arch members and pad body. Bergeron teaches that the shielding arch member and pad body may be adhered together (attached with glue; paragraph 0091). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adhere the arch members and pad body of Gesso, as taught by Bergeron, in order to use a well-known technique for attaching two elements of footwear which provides a strong, permanent attachment and which is inexpensive to manufacture.
Response to Arguments
Applicant's arguments filed 09/17/2025 regarding the Specification have been fully considered but they are not persuasive. Applicant argues that Velcro® and Boa® are not known via a generic term. However, at least Velcro® has a well-known generic term (hook and loop fastener).
Applicant’s arguments with respect to claim(s) 1-6 and 13-20 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
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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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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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/SHARON M PRANGE/ Primary Examiner, Art Unit 3732
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