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 June 11, 2026 has been received, Claims 16, 19-21, 23-25, 27-30, and 32-33 are currently pending.
Drawings
1. The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “and wherein an apex course of lined up apexes of the arching runs from an inner instep to an outer instep of the insole” of claims 16 and 33 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
2. Claim 16, 19-21, 23-25, 27-30, and 32-33 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 16 and 33 recite “and wherein an apex course of lined up apexes of the arching runs from an inner instep to an outer instep of the insole”. The claim limitation is indefinite as it is wholly unclear what Applicant is intending to claim with the limitation “an apex course of lined up apexes”. Applicant’s disclosure only shows a single apex and it is well known that a structure with one arch would only have one apex, not a line of multiple apexes; i.e. only one point of the arch can be the highest. Claims 16 and 33 are rejected as best understood by Examiner.
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.
3. Claim(s) 16, 19, 21, 23-25, 27-30, and 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 Otte (EP 2,111,770 B1).
Regarding Claim 16, 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 does not disclose wherein the insole comprises an arching, and wherein an apex course of lined up apexes of the arching runs from an inner instep to an outer instep of the insole. However, Otte teaches an insole (1) comprises an arching (B), and wherein an apex course of lined up apexes (i.e. apexes along line V, insofar as is definite) of the arching runs from an inner instep (13) to an outer instep (12) of the insole (as seen in Fig.1, 2 & 4).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to have modified the insole of Fitchmun to be formed with an arching running from an inner instep to an outer instep, as taught by Otte, in order to provide an insole where the forefoot is stabilized and allows a perfect propulsion of the 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 27, When in combination, Fitchmun and Otte teach an insole according to claim 16, wherein the arching has a vertex (i.e. vertex of Otte’s arching) with two legs (see annotated Figures below).
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Regarding Claim 28, When in combination, Fitchmun and Otte teach 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 Figures 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 elongated 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 does not disclose wherein the insole comprises an arching, and wherein an apex course of lined up apexes of the arching runs from an inner instep to an outer instep of the insole. However, Otte teaches an insole (1) comprises an arching (B), and wherein an apex course of lined up apexes (i.e. apexes along line V, insofar as is definite) of the arching runs from an inner instep (13) to an outer instep (12) of the insole (as seen in Fig.1, 2 & 4).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to have modified the insole of Fitchmun to be formed with an arching running from an inner instep to an outer instep, as taught by Otte, in order to provide an insole where the forefoot is stabilized and allows a perfect propulsion of the foot.
4. 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 Otte (EP 2,111,770 B1), in view of Lee (US 5,401,564).
Regarding Claim 20, Fitchmun, Rich, and Otte 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.
5. Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fitchmun (US 4,778,717), Rich (US 2016/0095737), and Otte (EP 2,111,770 B1), in view of Swartz (US 6,346,210).
Regarding Claim 32, Fitchmun, Rich, and Otte 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.
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
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 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, Alissa J. Tompkins can be reached at 571-272-3425. 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
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