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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/22/2025 has been entered.
Claims 1, 7, 13, and 16 have been amended, and claims 1-20 remain pending in this application.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 7-9, and 13-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 10,602,802. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent.
Claims 1, 7, 13, 19, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 10,918,160. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent.
Claims 1-3, 7-9, 13-15, and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11,445,781. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent.
Claims 1-4, 7-10, 13-16, and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-4 of U.S. Patent No. 12,011,058. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent.
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 (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, 5-7, 10-12, 19, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Busse et al. (US 7,793,438), herein Busse.
Regarding claim 1, Busse discloses an article of footwear (1100) comprising: a midsole having a first portion (front 1128) and a second portion (rear 1128, 1126, 1230a), the second portion rearward of the first portion; a footbed (1125); and an upper, the upper comprising a front upper portion (1110) and a rear upper portion (1130, 1180); wherein the second portion of the midsole is coupled to the rear upper portion (Fig. 11); wherein the footbed is directly coupled to the front upper portion (column 13, lines 9-11); wherein the footbed is configured to pivot relative to the second portion of the midsole between a first orientation (closed position) and a second orientation (open position; Fig. 11), wherein at least a portion of the footbed is spaced further from the second portion of the midsole in the second orientation than in the first orientation; wherein, in the first orientation, the portion of the footbed is positioned underneath a protrusion (pawl) coupled to an inner surface of the rear upper portion (column 14, lines 22-25), the protrusion configured to secure the footbed in the first orientation; and wherein, in the first orientation, the rear upper portion establishes an upper extent of the article of footwear at a rear of the article of footwear (wherein the outer counter 1130 and connector 1180 form the rearmost layer of the upper, and therefore establish the upper extent of the footwear at the rear) (column 13, line 8-column 14, line 37; Fig. 11, 12A, 12B).
Regarding claim 5, Busse discloses that a rear periphery of the footbed is surrounded by the rear upper portion in the first orientation.
Regarding claim 6, Busse discloses that an upper surface of the second portion of the midsole is recessed (recess formed within walls formed by portions 1233, 1234) to receive the footbed in the first orientation (Fig. 12A).
Regarding claim 7, Busse discloses an article of footwear (1100) comprising: a sole portion (1128, 1126, 1230a); a footbed (1125); and an upper, the upper comprising an upper forward portion (1110) and an upper heel portion (1130); wherein the upper forward portion includes a toe region at a front of the upper (Fig. 11); wherein the sole portion is coupled to the upper heel portion (Fig. 11); wherein the footbed is coupled to the upper forward portion (column 13, lines 9-11); wherein the footbed and toe region of the upper forward portion are configured to pivot relative to the sole portion between an open position (Fig. 11), in which a rear edge of the footbed is not in contact with the sole portion, and a closed position, in which the rear edge of the footbed is in contact with the sole portion; and wherein, in the closed position, the rear edge of the footbed is positioned underneath a protrusion (pawl) coupled to an inner surface of the upper heel portion (column 14, lines 22-25), the protrusion configured to secure the upper forward portion and the footbed in the closed position; and wherein, in the open position, no part of the upper forward portion and no part of the footbed is secured to the upper heel portion at a rear of the upper heel portion (wherein both the upper forward portion and footbed are fully spaced apart from the rear of the upper heel portion in the open position; Fig. 11) (column 13, line 8-column 14, line 37; Fig. 11, 12A, 12B).
Regarding claim 10, Busse discloses that the upper heel portion has a rear collar portion; and the protrusion is disposed at an inner periphery of the upper heel portion under the rear collar portion (Fig. 11).
Regarding claim 11, Busse discloses that the rear edge of the footbed is surrounded by the upper heel portion in the closed position.
Regarding claim 12, Busse discloses that an upper surface of the sole portion is recessed (recess formed within walls formed by portions 1233, 1234) to receive the footbed in the closed position (Fig. 12A).
Regarding claim 19, Busse discloses that the front upper portion extends at a front of the first portion of the midsole (Fig. 11).
Regarding claim 20, Busse discloses that the footbed is directly coupled to the upper forward portion (column 13, lines 9-11).
Claim Rejections - 35 USC § 103
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) 13, 17, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Busse et al. (US 7,793,438), herein Busse, in view of Jouffroy et al. (WO 2014/033396 A1), herein Jouffroy.
Regarding claim 13, Busse discloses an article of footwear (1100) comprising: a sole portion (1128, 1126, 1230a); a footbed (1125); and an upper, the upper comprising an upper forward portion (1110) and an upper heel portion (1130, 1180); wherein the sole portion is coupled to the upper heel portion (Fig. 11); wherein the footbed is directly coupled to the upper forward portion (column 13, lines 9-11); wherein the footbed and upper forward portion are configured to pivot relative to the sole portion between a first orientation (closed position) and a second orientation (open position; Fig. 11); wherein, in the first orientation, at least a portion of a lower surface of the footbed is in contact with an upper surface of the sole portion; wherein, in the second orientation, the at least a portion of the lower surface of the footbed is not in contact with the upper surface of the sole portion; and wherein, in the second orientation, a portion of the footbed is positioned underneath a protrusion (pawl) coupled to an inner surface of the upper heel portion (column 14, lines 22-25), the protrusion configured to secure the footbed in the first orientation; and wherein, in the first orientation, the upper heel portion establishes an upper extent of the article of footwear at a rear of the article of footwear (wherein the outer counter 1130 and connector 1180 form the rearmost layer of the upper, and therefore establish the upper extent of the footwear at the rear) (column 13, line 8-column 14, line 37; Fig. 11, 12A, 12B).
Busse does not disclose that the upper forward portion includes a tongue. Jouffroy teaches an article of footwear having a forward upper portion and footbed configured to pivot relative to a sole portion (Fig. 1A). The upper forward portion includes a tongue (10). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a tongue, as taught by Jouffroy, to the upper forward portion of Busse in order to allow the upper portion to be better fitted to the individual wearer’s foot.
Regarding claim 17, Busse discloses that a rear periphery of the footbed is surrounded by the upper heel portion in the first orientation.
Regarding claim 18, Busse discloses that an upper surface of the sole portion is recessed (recess formed within walls formed by portions 1233, 1234) to receive the footbed in the first orientation (Fig. 12A).
Claim(s) 2, 4, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Busse, as applied to claims 1 and 7, in view of Jerzy (WO 2007/080205 A1).
Regarding claims 2 and 8, Busse does not disclose that the protrusion is compliant. Jerzy teaches an article of footwear comprising: a midsole (3, 6, 18); a footbed (2); and an upper (17, 21, 31, 25, 50; wherein the footbed is configured to pivot relative to the second portion of the midsole between a first orientation (Fig. 2) and a second orientation (Fig. 1), wherein at least a portion of the footbed is spaced further from the second portion of the midsole in the second orientation than in the first orientation; and wherein, in the first orientation, the portion of the footbed is positioned underneath a protrusion (pawl 10, 16) coupled to an inner surface of the rear upper portion, the protrusion configured to secure the footbed in the first orientation (Fig. 1, 2, 16). The protrusion is a compliant protrusion (wherein the portion 16 of the protrusion is elastic). 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 protrusion of Busse compliant, as taught by Jerzy, as this would be a simple substation of one type of protrusion/pawl for another, with predictable result of providing a simple, integrated pawl which simplifies manufacturing and reduces the use of additional materials and connections.
Regarding claim 4, Busse discloses that the rear upper portion has a rear collar portion; and the protrusion is disposed at an inner periphery of the rear upper portion under the rear collar portion (Fig. 11).
Claim(s) 3 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Busse and Jerzy, as applied to claims 1, 2, 7, and 8, further in view of Adami et al. (US 2014/0202044), herein Adami.
Regarding claims 3 and 9, the combination of Busse and Jerzy does not disclose the material of the protrusion. Adami teaches that a counter of an article of footwear may be formed of a foam material (paragraph 0039). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the rear upper portion (including the protrusion/pawl) of a foam material, in order to use a material well known for use in shoe counters/rear uppers, which provides lightweight support to the heel area of the shoe.
Claim(s) 14 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Busse and Jouffroy, as applied to claim 13, further in view of Jerzy (WO 2007/080205 A1).
Regarding claim 14, the combination of Busse and Jouffroy does not disclose that the protrusion is compliant. Jerzy teaches an article of footwear comprising: a midsole (3, 6, 18); a footbed (2); and an upper (17, 21, 31, 25, 50; wherein the footbed is configured to pivot relative to the second portion of the midsole between a first orientation (Fig. 2) and a second orientation (Fig. 1), wherein at least a portion of the footbed is spaced further from the second portion of the midsole in the second orientation than in the first orientation; and wherein, in the first orientation, the portion of the footbed is positioned underneath a protrusion (pawl 10, 16) coupled to an inner surface of the rear upper portion, the protrusion configured to secure the footbed in the first orientation (Fig. 1, 2, 16). The protrusion is a compliant protrusion (wherein the portion 16 of the protrusion is elastic). 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 protrusion of Busse and Jouffroy compliant, as taught by Jerzy, as this would be a simple substation of one type of protrusion/pawl for another, with predictable result of providing a simple, integrated pawl which simplifies manufacturing and reduces the use of additional materials and connections.
Regarding claim 16, Busse discloses that the upper heel portion has a rear collar portion that establishes the uppermost extent of the article of footwear at the rear of the article of footwear; and the protrusion is disposed at an inner periphery of the upper heel portion under the rear collar portion (Fig. 11).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Busse, Jouffroy, and Jerzy, as applied to claim 14, further in view of Adami et al. (US 2014/0202044), herein Adami.
Regarding claim 15, the combination of Busse, Jouffroy, and Jerzy does not disclose the material of the protrusion. Adami teaches that a counter of an article of footwear may be formed of a foam material (paragraph 0039). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the upper heel portion (including the protrusion/pawl) of a foam material, in order to use a material well known for use in shoe counters/rear uppers, which provides lightweight support to the heel area of the shoe.
Response to Arguments
Applicant's arguments filed 12/22/2025 have been fully considered but they are not persuasive.
Regarding claims 1 and 13, Applicant argues that Busse’s rear portion 1116 and connector 1180 will be above the upper extent of the rear upper portion 1130 in the first orientation, and therefore Busse does not disclose that in the first orientation, the rear upper portion establishes an upper extent of the article of footwear at a rear of the article of footwear. However, as discussed above, the outer counter 1130 and connector 1180 form the rearmost layer of the upper, and therefore establish the upper extent of the footwear at the rear (rearmost portion). The connector 1180 is a part of the rear upper portion, as currently rejected.
Regarding claim 7, Applicant argues that Busse’s front upper portion 1110 and heel footbed 1125 are secured to the rear of the upper heel portion 1130 via the connector 1180 and heel collar 1116, and therefore Busse does not disclose that in the open position, no part of the upper forward portion and no part of the footbed is secured to the upper heel portion at a rear of the upper heel portion. However, both the upper forward portion and footbed are fully spaced apart from the rear of the upper heel portion in the open position (Fig. 11), and therefore are not secured to the upper heel portion. Applicant cites connector 1180 and heel collar 1116 as indirect connections between elements, but these do not mean that the upper forward portion and footbed are secured to the upper heel portion at a rear of the upper heel portion, as claimed. Using indirect connections, even Applicant’s own upper forward portion and footbed are secured to the upper heel portion at a rear of the upper heel portion (see Fig. 8, where upper forward portion is connected to a rear of the upper heel portion via the sole portion and biasing member 154).
Conclusion
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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/SHARON M PRANGE/ Primary Examiner, Art Unit 3732
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