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 January 6, 2026 has been received, Claims 1-11 and 14-19 are currently pending, with Claims 11 and 14-19 remaining withdrawn from prosecution at this time.
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.
1. Claim 5 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 5 “the first arch protrusion is shaped as a teardrop”. The claim limitation is indefinite as it is unclear what constitutes “shaped as a teardrop”, as teardrops can be many shapes. Claim 5 is 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.
2. Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Swensen (US 7,426,794) in view of Del Vecchio (US 4,084,333).
Regarding Claims 1 and 8, Swensen discloses a biomechanics insole (11), comprising: a forefoot portion (i.e. forefoot region forward of 23); an arch portion (i.e. arch region), connected to the forefoot portion, the arch portion comprising: a first arch protrusion portion (22), disposed at a part of the arch portion; a second arch protrusion portion (24), disposed at another part of the arch portion; a third arch protrusion portion (33), disposed at yet another part of the arch portion; and a heel portion (i.e. heel region), connected to the arch portion, the heel portion comprising: a single heel recess (18); and a heel protrusion (19), disposed around the single heel recess (as seen in Fig.7-9). Swensen does not disclose the forefoot portion comprising: a single forefoot protrusion; and at least one forefoot recess, disposed in a part of the single forefoot protrusion; wherein the forefoot portion further comprises a back recess (A7) disposed on a backside of the single forefoot protrusion. However, Del Vecchio teaches an insole (A) having a forefoot portion comprising: a single forefoot protrusion (A8); and at least one forefoot recess (A9), disposed in a part of the single forefoot protrusion (as seen in Fig.1 & 2); wherein the forefoot portion further comprises a back recess (A7) disposed on a backside of the single forefoot protrusion (A8)(as seen in Fig.1).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the forefoot portion of Swensen to include a forefoot protrusion, at least one forefoot recess, and a back recess, as taught by Del Vecchio, in order to provide an insole that delivers enhanced support and comfort to a wearer’s toes during use.
Regarding Claim 2, Del Vecchio further teaches a biomechanics insole according to claim 1, wherein the single forefoot protrusion (A8) has a convex protrusion feature (i.e. convex portions of A8)(as seen in Fig.2).
Regarding Claim 3, Del Vecchio further teaches a biomechanics insole according to claim 1, wherein an amount of the at least one forefoot recess is two (i.e. there are two A9), which are respectively disposed on both sides (i.e. medial & lateral sides) of the single forefoot protrusion (A8)(as seen in Fig.2).
Regarding Claim 4, Del Vecchio further teaches a biomechanics insole according to claim 1, wherein the forefoot recess (A9) is provided with a peripheral feature (i.e. side wall of convex portions of A8, A9 & A12), which surrounds the forefoot recess and has a height (as seen in Fig.1 & 2).
Regarding Claim 5, Swensen discloses a biomechanics insole according to claim 1, wherein a part of the arch portion (of 22) is located at a middle position of the arch portion, and the first arch protrusion is shaped as a teardrop (as seen in Fig.7; inasmuch as has been claimed by Applicant the first arch protrusion is shaped as a teardrop, in that tear drops can form a variety of shapes).
Regarding Claim 6, Swensen discloses a biomechanics insole according to claim 1, wherein another part of the arch portion (of 24) is located an on inner side (i.e. medial side) of the arch portion, and the second arch protrusion has an extension length (as seen in Fig.7 & 8).
Regarding Claim 7, Swensen discloses a biomechanics insole according to claim 1, wherein yet another part of the arch portion (of 33) is located on an outer side (i.e. lateral side) of the arch portion, and the third arch protrusion and the heel protrusion form a depression in between (as seen in Fig.7-9).
Regarding Claim 9, When in combination, Swensen and Del Vecchio further teach a biomechanics insole according to claim 8, further comprising a forefoot bottom pad (Col.4, lines 56-59) disposed at the back recess (Del Vecchio: A7)(i.e. the resilient pad material of Swensen would be disposed at the back recess of Del Vecchio, as it forms the back recess) .
Regarding Claim 10, Swensen discloses a biomechanics insole according to claim 1, wherein the heel portion further comprises a back protrusion (21) disposed on a backside (i.e. heel end side) of the single heel recess (as seen in Fig.7 & 8).
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, Khoa Huynh can be reached at 571-272-4888. 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