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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 3, 2025 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
1. Claim 32 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 32 fails to further limit the subject matter of the claim upon which it depends, Claim 16. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 16, 19, 21, 23-30 and 32-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fitchmun (US 4,778,717) in view of Rich (US 2016/0095737), and in further view of Swartz (US 6,346,210).
Regarding Claims 16 and 32, Fitchmun discloses an insole (10) for insertion into a shoe (as seen in Fig.1), the insole comprising: a first layer (18,24) made of carbon fiber-reinforced plastic (Col.5, lines 9-26); one or more intermediate layers (22); and a second layer (20,26) made of carbon fiber-reinforced plastic (Col.5, lines 9-26), wherein the layers are arranged at least partially one above the other (as seen in Fig.3-4), and wherein the first (18,24) and second (20,26) layers and the one (22) or more intermediate layers extend continuously over the entire course of the insole (as seen in Fig.1). Fitchmun does not disclose wherein the one or each of the one or more intermediate layers has a carbon fiber laid fabric. However, Rich teaches an insole having an intermediate layer (14) of carbon fiber laid fabric (para.11 & 60).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to have substituted the intermediate layer material of Fitchmun for the carbon fiber laid fabric of Rich, as a simple substitution of one well known intermediate, insole material for another, in order to yield the predictable result of providing a supportive insole material. When in combination, Fitchmun and Rich teach wherein the carbon fibers of the carbon fiber laid fabric are aligned essentially unidirectionally (Fitchmun: Col.5, lines 27-38 & Rich: para.11).
Fitchmun and Rich disclose the invention substantially as claimed above. Fitchmun further discloses a soft covering material (16)(Col.4, lines 48-49). Fitchmun does not disclose wherein the insole is foamed with a foam material. However, Swartz teaches an insole (10) with a covering material (12,14) that is at least partially foamed with a foam material (Col.5, lines 65-67).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to have formed the covering layer of Fitchmun with a foam, as taught by Swartz, in order to provide a comfortable and supportive substrate under a user’s foot.
Regarding Claim 19, Fitchmun discloses an insole according to claim 16, wherein the first and second layers each have a carbon fiber woven fabric (Col.5, lines 9-26).
Regarding Claim 21, When in combination, Fitchmun and Rich teach an insole according to claim 16, wherein the carbon fibers of the carbon laid fiber fabric of the first and second layers (of Fitchmun) are essentially aligned at a 0*/90* angle relative to the carbon fibers of a carbon fiber woven fabric of one (14 of Rich) or more intermediate layers (i.e. as evidenced by Fig.3 & 4 of Fitchmun, all three layers would be oriented in the same direction and, therefore, are “essentially aligned” at a 0* angle).
Regarding Claim 23, Fitchmun discloses an insole according to claim 16, wherein the first and second layers each forms an essentially planar surface (as seen in Fig.1 & 4; the layers for an “essentially” planar/flat surface).
Regarding Claim 24, Fitchmun discloses an insole according to claim 16, wherein the insole has a constant thickness (inasmuch as has been claimed by Applicant, as seen in Fig.4 & 9, the insole material has a constant thickness).
Regarding Claim 25, Fitchmun discloses an insole according to claim 16, wherein the insole has a thickness of at most 1.2 mm and/or the first (18,24) and second (20,26) layers each have a thickness of at most 0.3 mm (Col.5, lines 61-65; 8 thousandths of an inch=0.2032mm & 0.75 thousandths of an inch=0.01905mm; 0.2032mm + 0.01905mm= 0.22225mm) and/or the one or more intermediate layers have a total thickness of at most 0.6 mm.
Regarding Claim 26, Fitchmun discloses an insole according to claim 16, wherein an area of the insole has an arching (See annotated Figure below).
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Regarding Claim 27, Fitchmun discloses an insole according to claim 26, wherein the arching has a vertex with two legs (See annotated Figure above).
Regarding Claim 28, Fitchmun discloses an insole according to claim 27, wherein a rear leg adjoins an area that is loaded by a heel, and a front leg adjoins or is part of the area that is not loaded by the heel (See annotated Figure above).
Regarding Claim 29, Fitchmun discloses an insole according to claim 16, wherein in an area of the insole there is a bead (i.e. raised edge around heel cup to midfoot)(as seen in Fig.1).
Regarding Claim 30, Fitchmun discloses an insole according to claim 29, wherein the bead (i.e. raised edge around heel cup to midfoot) is essentially elongated and/or runs along its length in a running direction of the insole (as seen in Fig.1, the raised edge around heel cup to midfoot is elongate and runs along the length of the insole).
Regarding Claim 33, Fitchmun discloses a shoe (i.e. it is well known that insoles are placed in shoes), comprising: an insole (10) for insertion into a shoe, the insole having: a first layer (18,24) made of carbon fiber-reinforced plastic (Col.5, lines 9-26); one or more intermediate layers (22); and a second layer (20,26) made of carbon fiber-reinforced plastic (Col.5, lines 9-26), wherein the layers are arranged at least partially one above the other (as seen in Fig.3-4), and wherein the first (18,24) and second (20,26) layers and the one (22) or more intermediate layers extend continuously over the entire course of the insole (as seen in Fig.1). Fitchmun does not disclose wherein the one or each of the one or more intermediate layers has a carbon fiber laid fabric. However, Rich teaches an insole having an intermediate layer (14) of carbon fiber laid fabric (para.11 & 60).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to have substituted the intermediate layer material of Fitchmun for the carbon fiber laid fabric of Rich, as a simple substitution of one well known intermediate, insole material for another, in order to yield the predictable result of providing a supportive insole material. When in combination, Fitchmun and Rich teach wherein the carbon fibers of the carbon fiber laid fabric are aligned essentially unidirectionally (Fitchmun: Col.5, lines 27-38 & Rich: para.11).
Fitchmun and Rich disclose the invention substantially as claimed above. Fitchmun further discloses a soft covering material (16)(Col.4, lines 48-49). Fitchmun does not disclose wherein the insole is foamed with a foam material. However, Swartz teaches an insole (10) with a covering material (12,14) that is at least partially foamed with a foam material (Col.5, lines 65-67).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to have formed the covering layer of Fitchmun with a foam, as taught by Swartz, in order to provide a comfortable and supportive substrate under a user’s foot.
3. Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fitchmun (US 4,778,717), Rich (US 2016/0095737), and Swartz (US 6,346,210) in view of Lee (US 5,401,564).
Regarding Claim 20, Fitchmun, Rich, and Swartz disclose the invention substantially as claimed above. Fitchmun discloses an insole according to claim 19, wherein the carbon fibers of carbon fiber woven fabric are woven (Col.5, lines 9-26). Fitchmun does not disclose the woven is a twill weave. However, Lee teaches an orthotic (50) formed from a woven material having a twill weave (as seen in Fig.1; Col.7, lines 19-28).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to have substituted the weave structure of the woven material of Fitchmun for the twill weave of Lee, as a simple substitution of one well known weave structure for another, in order to yield the predictable result of providing a durable woven material.
Response to Arguments
In view of Applicant's amendment, the search has been updated, and new prior art has been identified and applied. Applicant's arguments have been considered but are moot in view of the new ground(s) of rejection.
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 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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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732