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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/26/2025 has been entered.
Claims 1-2 and 5-6 are pending in this application. Any rejection(s) and/or objection(s) made in the previous Office Action and not repeated below, are hereby withdrawn due to Applicant's amendments and/or arguments in the response filed on 12/26/2025.
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.
Claims 2 and 6 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 pre-AIA the applicant regards as the invention.
Claim 2 recites the limitation "wherein, in a width of the second cushion portion (L2), which is parallel to a width direction of the sole, is formed to have a length of 10 to 40 % of a width (L1) of the main body", which renders the claim indefinite. It is unclear what is formed to have a length of 10 to 40 % of a width (L1) of the main body. For examination purposes, the examiner has interpreted that [[in]] a width of the second cushion portion (L2), which is parallel to a width direction of the sole, is formed to be 10 to 40% of a width (L1) of the main body.
Claim 6 recites the limitation "including one or more of thermoplastic elastomer (TPE), including ethylene-vinyl acetate copolymer (EVA)". First, it is unclear what is being referred to by "one or more of thermoplastic elastomer (TPE)". Second, it is unclear what is including ethylene-vinyl acetate copolymer (EVA). The gel material? The one or more of thermoplastic elastomer (TPE)? For examination purposes, the limitation has been construed to be "including one or more of thermoplastic elastomers (TPE), the one or more of thermoplastic elastomers including ethylene-vinyl acetate copolymer (EVA)".
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 2 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claim 2 recites "a width L2 parallel to a width direction of the sole", which appears to claim parts of the human body which is not directed to statutory subject matter (i.e. human per se). See MPEP 2106, Section I. It is respectfully suggested that these rejections may be overcome by including a phrase such as "configured to," "adapted to," "when in use," or "capable of".
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 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.
Claims 1-2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Jo (KR 100802066 B1).
Regarding claim 1, Jo discloses an insole (figs. 1-2; see English translation; pp. 3, 6) for golf shoes (capable of being used for golf shoes; figs. 1-2; p. 6), the insole comprising:
a main body (pad 10; figs. 1-2; p. 6) configured to support a sole of a foot comprising a forefoot (figs. 1-2; p. 6);
a first cushion portion (formed by a layer of surface protrusion 13 and distributed in a forefoot portion other than the area attached with cushioning member 17; see figs. 1-3; p. 6) which is provided on the main body (see figs. 1-3; p. 6) and configured to support a portion of the forefoot (as discussed above; see figs. 1-3; p. 6);
a second cushion portion (cushioning member 17; figs. 1, 3-4; p. 6) which is provided on the main body (figs. 1, 3-4; p. 6), configured to support the remaining portion of the forefoot (as discussed above; see figs. 1-3), is disposed in a region corresponding to a location where a little toe is seated (see the position of cushioning member 17 relative to protruding arch portion 12 and heel portion 11; noting that an arch portion is at a medial side of an insole, the cushioning member 17 covers a lateral portion of a forefoot region corresponding to a location where a little toe is seated; figs. 1-2; p. 6), and is configured to support a lateral side of the forefoot (figs. 1-2; p. 6);
a third cushion portion (cushioning member 18; figs. 1-4; p. 6) which is provided on the main body and configured to support a rear portion of the foot (figs. 1-4; p. 6);
wherein the main body comprise an arch support (protruding arch portion 12; figs. 1-2, 4; p. 6) that protrudes between the first cushion portion and the third cushion portion (see fig. 4); and
wherein the main body has a first total thickness corresponding to the first cushion portion (the sum of thickness of pad 10, thickness of stretchable fiber 20 and thickness of surface protrusions 13 in the portion of the forefoot; see figs. 1, 4) and a second total thickness corresponding to the second cushion portion (the first total thickness plus the thickness of cushioning member 17; see figs. 1, 4),
wherein the second total thickness is greater than the first total thickness (as the second total thickness is equal to the first total thickness plus the thickness of cushioning member 17; see fig. 4).
Jo does not explicitly disclose wherein the second total thickness is 1 to 5 mm greater than the first total thickness; i.e., the thickness of cushioning member 17 is 1-5 mm. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have configured the thickness of the cushioning member 17, as disclosed by Jo, with the thickness of the cushioning member 17 being 1 to 5 mm, in order to provide the cushioning member 17 with a suitable thickness for sufficient support as well as comfort to a wearer's foot. A change in size/proportion is an obvious variation of engineering design and is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. Mere changes of dimensions/proportions are not considered to be patentably distinct limitations. See MPEP 2144.04 (IV)(A). By this configuration, the second total thickness would be 1 to 5 mm greater than the first total thickness.
Regarding claim 2, Jo discloses the insole for golf shoes of claim 1, and further discloses wherein, a width of the second cushion portion (L2), which is parallel to a width direction of the sole, is formed to have a length of 10 to 40 % of a width (L1) of the main body (see annotated fig. 3).
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Annotated Fig. 3 from KR 100802066 B1
Regarding claim 6, Jo discloses the insole for golf shoes of claim 1, except for wherein the second cushion portion is formed of a gel material including one or more of thermoplastic elastomer (TPE), including ethylene-vinyl acetate copolymer (EVA). However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected the material of the cushioning member 17 as claimed, in order to use a highly durable and elastic material for a bottom cushioning member. Such a configuration would be considered as a mere choice of preferred material that is on the basis of its suitability for the intended use. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Jo (KR 100802066 B1) in view of Cheskin (US 2010/0205831 A1).
Regarding claim 5, Jo discloses the insole for golf shoes of claim 1. Jo does not disclose wherein the first cushion portion is formed in a honeycomb structure where a plurality of first hexagonal columns shares a first partition wall, wherein the second cushion portion is formed in a honeycomb structure where a plurality of second hexagonal columns shares a second partition wall, and wherein the second partition wall is formed thicker than the first partition wall. However, Cheskin, in an analogous art, teaches an insole (fig. 1; para. 0039) comprising a cushion portion (forefront honeycomb cushioning area 22 in a gel layer 2; fig. 1; para. 0040) formed in a honeycomb structure (fig. 1; para. 0041) where a plurality of hexagonal columns shares a partition wall (see fig. 1). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have modified the first and second cushion portions as disclosed by Jo, with wherein the first cushion portion is formed in a honeycomb structure where a plurality of first hexagonal columns shares a first partition wall, wherein the second cushion portion is formed in a honeycomb structure where a plurality of second hexagonal columns shares a second partition wall as taught by Cheskin, in order to use honeycomb patterns, which have been long known to deflect force by temporarily deforming then returning to original configuration, to provide resilient cushioning to a user's foot (Cheskin; para. 0023) as well as promoting ventilation between the insole and the user's foot and the shoe (Jo; pp. 3-4). In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have configured the second partition wall being formed thicker than the first partition wall as the first cushion portion and the second cushion portion are enclosed in different pad layers. A configuration in size/proportion is an obvious variation of engineering design and is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. Mere changes of dimensions/proportions are not considered to be patentably distinct limitations. See MPEP 2144.04 (IV)(A).
Response to Arguments
In view of Applicant's amendment, newly modified grounds of rejection have been identified and applied. Further, Applicant's arguments filed on 12/26/2025 have been fully considered and addressed as follows.
In response to Applicant's argument that the present invention deliberately forms the region in which the second cushion portion is provided to be recessed inward relative to the region in which the first cushion portion is provided, the recessed second cushion portion of the present invention provides specific technical effects that are neither disclosed nor suggested by the prior art, it is noted that the above recessed or stepped arrangement is not recited in the claims. Unclaimed features, however, cannot impart patentability to claims. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998); In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/AIYING ZHAO/Primary Examiner, Art Unit 3732