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 .
Election/Restrictions
Applicant’s election without traverse of species VI (sole as shown in figures 8-9) in the reply filed on 5/31/2026 is acknowledged.
Claims 7 and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. The subject matter of claim 7 pertains to the embodiment shown in Embodiment II (figure 3) according to the disclosure and not embodiment pertaining to the elected figures 8-9.
To the extent that the withdrawn claims get rejoined, applicant should amend them during prosecution. Accordingly, if the independent claim is no longer generic then applicant is encourage to cancel the withdrawn claims.
Drawings
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 supporting piece extending into deformation space (32) (claim 3) 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.
The drawings are objected to because the support piece (4) is not clearly shown in the figures (see figures 2-3). Figures 2-3 don’t have clear lines showing the support piece and its relationship with regard to the midsole. 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
Claims 1-9 and 11-17 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. The follower body 3 (follower part 31, deformation space 32) is not clearly shown, especially the relationship between the follower part (31) and the supporting piece (4). It is not clear which part of the midsole is actually the follower part (31). With regard to claim 3, the follower part (31) extending in said deformation space (32) is not clearly shown or described in the specification. Does the part (31) extend into only a portion of the space (32) or into the entire space (32)?
Claims 1-9 and 11-17 is 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 pre-AIA the applicant regards as the invention.
The term “follower” (i.e. follower body and follower part) used throughout the claims is unclear and indefinite since it is not clear what structure this language encompasses.
In claim 1, the phrase “alternatively, said follower part (31) is set apart from the midsole body (21) and connected to the outsole (1), said follower part (31) being separated from said midsole body (21) by a deformation space (32)” is unclear and indefinite. It is not clear if the structure following the term “alternatively” is being claimed or not. Also, this language contradicts earlier portions of the claim such as the “follower part (31) integrally molded with said midsole body (21).” The language, in the art rejection below, will be ignored inasmuch as this structure appears to be optional via the language “alternatively”.
In claim 4, “the peripheral edge” lacks proper antecedent basis and is therefore indefinite.
In claim 5, the “upper surface of the shoe” lacks proper antecedent basis and is therefore indefinite.
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-6,8-9,11-15 and 17, as understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 10660400 (Baucom).
Regarding claims 1-6,8-9,11-15 and 17, Baucom discloses a sole, comprising a midsole (26) and an outsole (32), said midsole being connected to one side of the outsole (1), characterized in that:
said midsole comprises a midsole body (body of midsole 26) and a follower body, said follower body comprises a follower part (31) and a deformation space (32), said follower part (raised portions of midsole between grooves 50 and top edge which supports outer flange portion of insert 52; see figure 4) and said deformation space (space filled by insert 52, such as shown best in figure 4) are distributed adjacent to each other; said follower part is integrally molded with said midsole body (see figure 4 showing the midsole (26) all being one-piece and therefore is integral and can inherently be made out of molding), said deformation space being provided on at least one of the upper surface of said midsole body and on the lower surface (see figure 4 showing the insert 52 provided on the upper surface of the midsole body), and running along the thickness direction of said midsole body or along the width direction of said midsole in the width direction (as shown in the figures the space (grooves) running in the widthwise and the thickness direction as claimed). The remaining limitation at the end of claim 1 (i.e. “alternatively, said follower part (31) is set apart from the midsole body (21) and connected to the outsole (1), said follower part (31) being separated from said midsole body (21) by a deformation space (32)”) carries no weight inasmuch as this language is recited as an alternative language and is moreover indefinite as noted in the 35 USC 112 rejection above.
Regarding claims 2-3,6 and 8, see the supporting piece (52) made out of carbon material and located in the forefoot part shoe and therefore corresponds to the forefoot part of the human foot; at least see the figures and col. 7, lines 50-53.
Regarding claims 4-5, the perimeter of the midsole around the piece (52) defines the sidewall, upon which the piece (4) covers said sidewall.
Regarding claims 9,11-15 and 17; see the figures showing the shoe as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art cited and not relied upon by the Examiner for the above rejections are considered to be pertinent in that the references cited are considered to be the nearest prior art to the subject matter defined in the claims as required by MPEP707.05.
Bruce ‘387 teaches carbon plate 150 on top of midsole (140) and outsole (150) having all the structure as claimed.
McDaniel and Gilkerson appear to teach all the structure as claimed. Note the insole as taught represent the supporting piece as claimed.
Mason and Lim appear to teach all the structure as claimed. Note the insole (not shown) but taught would represent the supporting piece.
Applicant is duly reminded that a complete response must satisfy the requirements of 37 C.F. R. 1.111, including:
-“The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.”
--“A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.”
-Moreover, “The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP 2163.06” MPEP 714.02. The “disclosure” includes the claims, the specification and the drawings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TED KAVANAUGH whose telephone number is (571) 272-4556. The examiner can normally be reached on Monday-Thursday 8AM-6PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule a telephone interview, applicant is encouraged to call the examiner. Normally telephone interviews can quickly be scheduled. For other types of interviews, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached on 57-1272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ted Kavanaugh/
Primary Patent Examiner
Art Unit 3732
Tel: (571) 272-4556
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