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 .
Claims 1-6, 8-14, and 16-31 are pending in this application.
Response to Amendment
Claims 1, 8-10, 14, 16, 27, 28, and 30 are amended. Claims 7 and 15 are canceled.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-6, 8-14, and 16-26 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.
Applicant's arguments filed 03/26/2026 have been fully considered but they are not persuasive. Applicant states that “Maritz and Weber do not disclose a ‘last board’. Thus, they do not disclose or teach a last board having electrostatic discharge properties”. However, the Office Action mailed 01/06/2026 cites insole 16 of figure 2C of Maritz as the last board. Applicant does not address why the insole 16 of Maritz cannot be a last board. Furthermore, the insole 16 of Maritz includes an insole board 32 which suggest that the insole 16 of Maritz is a last board. Therefore, construing the insole 16 of Maritz to be the last board of claim 27 would be within Broadest Reasonable Interpretation. Therefore, the arguments are not persuasive.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3, 5, 6, 8, 9, 16, 18-23, 25, and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weber and further in view of Diharce et al. U.S. Patent Application 2021/0386158 (hereinafter “Diharce”).
Regarding claim 1, Weber teaches an insole (refer to abstract and figure 1) for electrostatic discharge footwear (refer to abstract and col. 1 lines 13-24) comprising: a base foam layer (i.e. cushioned layer 12)(figs.1 and 2)(refer also to col. 3 line 65 to col. 4 line 14) having a unitary body (implicit)(refer to figs.1 and 2); a fabric top cover (i.e. woven fabric 14)(figs.1 and 2) having conductive threads (i.e. conductive fibers 22)(fig.2) woven into the cover material (implicit)(refer to fig.2), overlaying the base foam layer (implicit)(refer to fig.2) and providing electrical flow paths from a foot of a wearer to the base foam layer (refer to col. 5 lines 12-26); and an electrostatic discharge chemical additive (i.e. electrically conductive material 18)(fig.2) added to the base foam layer (implicit)(refer also to col. 4 lines 15-24), creating polarity channels for an electrical pathway within the foam layer (implicit)(refer also to col. 4 lines 15-24); however, Weber does not teach the base foam layer with a contoured upward-facing shape to follow the shape of a wearer's foot; and a U-shaped, semi-rigid support member surrounding at least a portion of a bottom of the base foam layer while leaving a central portion of the base foam layer exposed, the semi-rigid support member surrounds the sides of a heel portion of the base foam layer and extending at least partially under an arch portion of the base foam layer. However, Diharce teaches the base foam layer (i.e. elastomeric foam 330)(fig.3) with a contoured upward-facing shape (refer to [0019]) to follow the shape of a wearer's foot (refer to [0019]); and a U-shaped, semi-rigid support member (i.e. arch cookie 360)(fig.3) surrounding at least a portion of a bottom of the base foam layer (implicit)(refer to fig.3) while leaving a central portion of the base foam layer exposed (implicit)(refer to fig.3), the semi-rigid support member surrounds the sides of a heel portion of the base foam layer (implicit)(refer to fig.3) and extending at least partially under an arch portion of the base foam layer (implicit)(refer to fig.3). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the insole of Weber to include the contouring and support of Diharce to provide the advantage of increasing the comfort, strength, and support of the insole.
Regarding claim 3, Weber and Diharce teach the insole of claim 1, wherein the fabric top cover is a woven material (refer to Weber abstract and figure 2).
Regarding claim 5, Weber and Diharce teach the insole of claim 1, wherein the base foam layer is constructed of polyurethane closed-cell foam (refer to Weber col. 3 line 65 to col. 4 line 14), the foam having a durometer in the range of 41c to 47c on the Asker c scale (refer to Diharce [0041]).
Regarding claim 6, Weber and Liu teach the insole of claim 1, wherein the electrostatic discharge chemical additive is added to a liquid polyurethane material before it is molded, foamed, and cured (implicit)(refer to Weber col. 2 lines 3-5)(the carbon black particles are disclosed as being uniformly distributed throughout the cushioned layer it would be impossible to do this after it is molded, foamed, or cured).
Regarding claim 8, Weber and Diharce teach the insole of claim 1, wherein the support member includes a conductive material (refer to Diharce [0035]: carbon fibers are conductive)
Regarding claim 9, Weber and Liu teach the insole of claim 7, wherein the support member covers less than half of a lower surface area of the base foam layer (implicit)(refer to Diharce fig.3).
Regarding claim 16, Weber teaches a method for creating an insole (refer to abstract and figure 1) for an electrostatic discharge footwear (refer to abstract and col. 1 lines 13-24), the method comprising: providing a base foam layer (i.e. cushioned layer 12)(figs.1 and 2)(refer also to col. 3 line 65 to col. 4 line 14) with a conductive additive (i.e. electrically conductive material 18)(fig.2); providing a fabric top cover (i.e. woven fabric 14)(figs.1 and 2) having conductive threads (i.e. conductive fibers 22)(fig.2) woven into the cover material (implicit)(refer to fig.2); and overlaying the fabric top cover on the base foam layer (implicit)(refer to figure 2 and col. 4 lines 15-24) to provide electrical flow paths from a foot of a wearer to the base foam layer (implicit)(refer to col. 4 lines 15-24); however, Weber does not teach securing a U-shaped, semi-rigid support member surrounding at least a portion of a bottom of the base foam layer while leaving a central portion of the base foam layer exposed, the semi-rigid support member surrounding the sides of a heel portion of the base foam layer and extending at least partially under an arch portion of the base foam layer. However, Diharce teaches securing a U-shaped, semi-rigid support member (i.e. arch cookie 360)(fig.3)(refer also to [0042]) surrounding at least a portion of a bottom of the base foam layer (i.e. polymer elastomeric foam 330)(fig.3) while leaving a central portion of the base foam layer exposed (implicit)(refer to fig.3), the semi-rigid support member surrounding the sides of a heel portion of the base foam layer (implicit)(refer to fig.3) and extending at least partially under an arch portion of the base foam layer (implicit)(refer to fig.3). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Weber to include the support of Diharce to provide the advantage of increasing the comfort, strength, and support of the insole.
Regarding claim 18, Weber and Diharce teach the method of claim 16, wherein the fabric top cover is a woven material (implicit)(refer to Weber figure 2 and Abstract).
Regarding claim 19, Weber and Diharce teach the method of claim 16, wherein the base foam layer is constructed of polyurethane closed-cell foam (refer to Weber col. 3 line 65 to col. 4 line 14) having a specific gravity between 0.31 to 0.35 (refer to Diharce [0029]) to provide contoured foot support (implicit).
Regarding claim 20, Weber and Diharce teach the method of claim 16, wherein the electrostatic discharge chemical additive is added to a liquid polyurethane material before it is molded, foamed, and cured (implicit)(refer to Weber col. 2 lines 3-5)(the carbon black particles are disclosed as being uniformly distributed throughout the cushioned layer it would be impossible to do this after it is molded, foamed, or cured).
Regarding claim 21, Weber and Diharce teach the method of claim 16, wherein the additive is conductive particles such as carbon powder (refer to col. 2 lines 3-5).
Regarding claim 22, Weber and Diharce teach the method of claim 16, further comprising forming the insole into a 3D supportive shape for a foot for increased comfort and foot interface (refer to Diharce [0019]).
Regarding claim 23, Weber and Diharce teach the method of claim 22, wherein the 3D supportive shape comprises a heel cup (refer to Diharce [0034]) and an arch support (refer to Diharce [0034]).
Regarding claim 25, Weber and Diharce teach the method of claim 22, wherein the thickness of the region of the insole beneath the ball and toes of the foot is reduced to accommodate various footwear (implicit)(refer to Diharce fig.5).
Regarding claim 26, Weber and Liu teach the method of claim 22, wherein the bottom surface of the base foam layer includes molded-in structures that provide relatively more or less cushioning to the foot in various regions of the foot (refer to Diharce arch cookie 360)(fig.5)(refer also to Diharce [0026] and [0029]).
Claim(s) 2 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weber and Diharce as applied to claim 1 above, and further in view of Loylay et al. U.S. Patent Application 2021/0000219 (hereinafter “Loylay”).
Regarding claim 2, Weber and Diharce teach the insole of claim 1, wherein the fabric top cover is constructed of a breathable material (refer to Liu col. 3 lines 42-54); however, they do not teach wherein the material is a knit material. However, Loylay teaches wherein the material is a knit material (refer to [0019]). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the insole of Weber and Diharce to include the knit material of Loylay to provide the advantage of using a common type of woven fabric.
Regarding claim 4, Weber and Diharce teach the insole of claim 1, wherein the fabric top cover is a non-woven material. However Loylay teaches wherein the fabric top cover is a non-woven material (refer to [0008]). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the insole of Weber and Diharce to include the non-woven material of Loylay to provide the advantage of increasing the flexibility of the fabric while decreasing weight and cost.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weber and Diharce as applied to claim 16 above, and further in view of Liu U.S. Patent No. 8,914,996 (hereinafter “Liu”) and Loylay et al. U.S. Patent Application 2021/0000219 (hereinafter “Loylay”).
Regarding claim 17, Weber and Diharce teach the insole of claim 16; however, they do not teach wherein the fabric top cover is constructed of a breathable knit material. However, Liu teaches wherein the fabric top cover is constructed of a breathable material (refer to Liu col. 3 lines 42-54). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the insole of Weber and Diharce to include the breathable material of Liu to provide the advantage of reducing sweating of the foot. However, Weber, Diharce, and Liu do not teach wherein the material is a knit material. However, Loylay teaches wherein the material is a knit material (refer to [0019]). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the insole of Weber, Diharce, and Liu to include the knit material of Loylay to provide the advantage of using a common type of woven fabric.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weber and Diharce as applied to claims 22 above, and further in view of Wakeland et al. U.S. Patent Application 2014/0366399 (hereinafter “Wakeland”).
Regarding claim 24, Weber and Diharce teach the method of claim 22; however, they do not teach wherein the edges adjacent the toe region of the insole are beveled to accommodate various footwear. However, Wakeland teaches wherein the edges adjacent the toe region of the insole are beveled to accommodate various footwear (refer to [0010] and [0040]). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Weber and Diharce to include the beveled edge of Wakeland to provide the advantage of enabling the insole to fit within a greater variety of footwear (refer to Wakeland [0040]).
Claim(s) 10, 11, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weber and further in view of Granger et al. U.S. Patent Application 2018/0192739 (hereinafter “Granger”).
Regarding claim 10, Weber teaches an insole (refer to abstract and figure 1) for electrostatic discharge footwear (refer to abstract and col. 1 lines 13-24) comprising: a base foam layer (i.e. cushioned layer 12)(figs.1 and 2)(refer also to col. 3 line 65 to col. 4 line 14); and a fabric top cover (i.e. woven fabric 14)(figs.1 and 2) having conductive threads (i.e. conductive fibers 22)(fig.2) woven into the cover material (implicit)(refer to fig.2), overlaying the base foam layer (implicit)(refer to fig.2) and providing electrical flow paths from a foot of a wearer to the base foam layer (refer to col. 5 lines 12-26); however, Weber does not teach the insole being formed in a 3D supportive shape for a foot for increased comfort and foot interface; and the base foam layer having a bottom surface with molded-in structures of ribs and recesses, the ribs and recesses in a toe portion of the insole being different than the ribs and recesses under a ball-of-the-foot region of the insole. However, Granger teaches the insole being formed in a 3D supportive shape for a foot (refer to [0006] and [0055]) for increased comfort and foot interface (implicit); and the base foam layer having a bottom surface with molded-in structures of ribs and recesses (refer to fig.2)(refer also to [0044]), the ribs and recesses in a toe portion of the insole being different than the ribs and recesses under a ball-of-the-foot region of the insole (refer to fig.2)(refer also to [0044]). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the insole of Weber to include the contouring of Granger to provide the advantage of increasing the comfort and stability of the insole.
Regarding claim 11, Weber and Granger teach the insole of claim 10, wherein the 3D supportive shape comprises a heel cup (i.e. Granger heel cup 104)(fig.2) and an arch support (i.e. Granger raised medial arch 119)(fig.2).
Regarding claim 13, Weber and Granger teach the insole of claim 10, wherein the thickness of the region of the insole beneath the ball and toes of the foot is reduced to accommodate various footwear (refer to Granger figures 4 and 5).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weber and Granger as applied to claim 10 above, and further in view of Wakeland.
Regarding claim 12, Weber and Granger teach the insole of claim 10; however, they do not teach wherein the edges adjacent the toe region of the insole are beveled to accommodate various footwear. However, Wakeland teaches wherein the edges adjacent the toe region of the insole are beveled to accommodate various footwear (refer to [0010] and [0040]). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the insole of Weber and Granger to include the beveled edge of Wakeland to provide the advantage of enabling the insole to fit within a greater variety of footwear (refer to Wakeland [0040]).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weber and Granger as applied to claim 11 above, and further in view of Diharce.
Regarding claim 14, Weber and Granger teach the insole of claim 11; however, they do not teach wherein a U-shaped, semi-rigid support member surrounds at least a portion of a bottom of the base foam layer while leaving a central portion of the base foam layer exposed, the semi-rigid support member surrounds the sides of a heel portion of the base foam layer and extending at least partially under an arch portion of the base foam layer. However, Diharce teaches wherein a U-shaped, semi-rigid support member (i.e. arch cookie 360)(fig.3) surrounds at least a portion of a bottom of the base foam layer (implicit)(refer to fig.3) while leaving a central portion of the base foam layer exposed (implicit)(refer to fig.3), the semi-rigid support member surrounds the sides of a heel portion of the base foam layer (implicit)(refer to fig.3) and extending at least partially under an arch portion of the base foam layer (implicit)(refer to fig.3). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the insole of Weber and Granger to include the contouring and support of Diharce to provide the advantage of increasing the comfort, strength, and support of the insole.
Claim(s) 27-29 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maritz et al. U.S. Patent Application 2002/0089805 (hereinafter “Maritz”) and further in view of Weber.
Regarding claim 27, Maritz teaches footwear (refer to figs. 2a-c) having electrostatic discharge properties (refer to Abstract), the footwear comprising: an upper (i.e. upper 12)(fig.2a) to surround at least a portion of the foot of a wearer (implicit); an outsole (i.e. outer sole 22)(fig.2c) engaged to the upper (implicit)(refer to fig.2a), the outsole having electrostatic discharge properties embedded therein (refer to [0038]); a last board (i.e. insole 16)(fig.2c) secured to the upper above the outsole (refer to [0032]: insole 16 is secured to upper 12 through midsole cushion 20), the last board having electrostatic discharge properties for discharging static electricity (refer to [0034]); an insole (i.e. sock liner 14)(fig.2c); however, Maritz does not teach the insole comprising: a cushion member having conductive material therein, the conductive material allowing transmission of static electricity from the top of the cushion member to the bottom of the cushion member; a cover material fixed to the cushion member, the cover material being a fabric, the fabric having fabric threads; wherein the fabric includes conductive threads extending through the fabric from top to bottom, the conductive threads being integrated with the fabric threads. However, Weber teaches the insole comprising: a cushion member (i.e. cushioned layer 12)(figs.1 and 2)(refer also to col. 3 line 65 to col. 4 line 14) having conductive material therein (i.e. conductive material 18)(fig.2), the conductive material allowing transmission of static electricity from the top of the cushion member to the bottom of the cushion member (implicit)(refer to col. 2 lines 3-5); a cover material (i.e. woven fabric 14)(figs.1 and 2) fixed to the cushion member (refer to adhesive 16)(fig.2), the cover material being a fabric (refer to woven fabric 14)(fig.2), the fabric having fabric threads (i.e. fibers 20)(fig.2); wherein the fabric includes conductive threads (i.e. conductive fibers 22)(fig.2) extending through the fabric from top to bottom (implicit)(refer to fig.2), the conductive threads being integrated with the fabric threads (implicit)(refer to fig.2). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the footwear of Maritz to include the insole of Weber to provide the advantage of increasing contact area and thereby discharge between the foot of the wearer and the ground.
Regarding claim 28, Maritz and Weber teach the footwear of claim 27, further comprising: a midsole (i.e. Maritz midsole cushion 20)(fig.2c) secured to a top of the outsole (refer to Maritz [0032]), the midsole having electrostatic discharge properties embedded therein (refer to Maritz resistor pack 18)(fig.2c); and wherein the insole rests on the last board and the last board is fixed to the midsole (implicit)(refer to Maritz figs.2a and 2c)(refer also to Maritz [0032]).
Regarding claim 29, Maritz and Weber teach the footwear of claim 28, wherein the cushion member comprises a closed-cell foam (refer to Weber col. 3 line 65 to col. 4 line 14) having an additive providing electrostatic discharge properties (i.e. Weber electrically conductive material 18)(fig.2), the cushion member having an upper surface contour substantially following the bottom contour of a foot (refer to Maritz sock liner 14)(fig.2c).
Regarding claim 31, Maritz and Weber teach the footwear of claim 28, wherein the last board includes a thread (i.e. Maritz conductive thread 38)(fig.2c) extending therethrough from top to bottom (implicit)(refer to Maritz fig.2c and [0035]), the thread being conductive (refer to Maritz conductive thread 38)(fig.2c).
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maritz and Weber as applied to claim 30 above, and further in view of Diharce.
Regarding claim 30, Maritz and Weber teach the footwear of claim 29; however, they do not teach the footwear further comprising a U-shaped semi-rigid support member along at least a portion of a bottom of the cushion member, the support member surrounding at least a portion of a bottom of the cushion member while leaving a central portion of the cushion member exposed, the semi-rigid support member surrounding the sides of a heel portion of the cushion member and extending at least partially under an arch portion of the cushion member, the semi-rigid support member providing additional heel and arch support to the cushion member. However, Diharce teaches the footwear further comprising a U-shaped, semi-rigid support member (i.e. arch cookie 360)(fig.3) along at least a portion of a bottom of the cushion member (implicit)(refer to foam 330)(fig.3), the support member surrounding at least a portion of a bottom of the cushion member (implicit)(refer to fig.3) while leaving a central portion of the cushion member exposed (implicit)(refer to fig.3), the semi-rigid support member surrounding the sides of a heel portion of the cushion member (implicit)(refer to fig.3) and extending at least partially under an arch portion of the cushion member (implicit)(refer to fig.3), the semi-rigid support member providing additional heel and arch support to the cushion member (refer to [0034]). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the insole of Weber to include the contouring and support of Diharce to provide the advantage of increasing the comfort, strength, and support of the insole.
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.
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/KEVIN J COMBER/Primary Examiner, Art Unit 2838