Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-16 in the reply filed on 11/10/25 is acknowledged.
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 1-15 and 21-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 11219270 or 11540592 or 12114726. Although the claims at issue are not identical, they are not patentably distinct from each other because not identical, they are not patentably distinct from each other because all claim footwear comprising an upper, strobel board, first midsole layer, second midsole layer, an outsole, a plate, and varying thicknesses of the midsole layers with specifics as claimed.
Claim Interpretation
In reference to the phrase “substantially flat”, in view of applicants arguments and applicants’ specification page 16 which states “the Strobel board comprises a substantially flat piece of flexible, relatively inelastic material…or the like configured to provide a barrier… The Strobel board may be cut, machined, or otherwise shaped to obtain its final form.”, this phrase “substantially flat” has been considered to be referring to the material of the element prior to shaping and is essentially a product by process limitation, i.e. the Strobel/substantially flat element is “an element which is capable of being made from a flat material”. It is noted that the finished product clearly shows the Strobel element as being shaped/curved.
Claim Rejections - 35 USC § 102
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) 1-8, 10-12, 15, and 21-23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bruce (2018/0132564).
Bruce shows An article of footwear comprising:
an upper (100) coupled to a substantially flat element (220D and 300 which are considered to form a “flat element” inasmuch as applicant has disclosed such in that 220D and 300 are clearly capable of being formed from a flat material), wherein a lower edge of the upper is directly attached to the substantially flat element and directly contacts at least a peripheral edge of the substantially flat element, such that the upper and the substantially flat element collectively define a foot compartment of the article of footwear, the foot compartment configured to contain a foot of a wearer (see figures 18 and 19);
an internal midsole layer (270) positioned within the foot compartment (see figures 18 and 19), a bottom surface of the internal midsole layer in direct contact with a top surface of the substantially flat element (see figure 19); and
an external midsole layer (250d) positioned outside of the foot compartment, a top surface of the external midsole layer coupled to a bottom surface of the substantially flat element (see figure 19), a full extent of the external midsole layer extending from a forefoot region of the article of footwear (as shown in figure 18 the external midsole layer 250d extends the complete length of the footwear);
wherein the substantially flat element is configured to provide a barrier between the internal midsole layer and the external midsole layer (as shown in figure 19 the internal midsole 270 is completely separated from the external midsole 250d by element 220D and 300), and
wherein a thickness of the internal midsole layer varies along a length of the article of footwear (see figure 18 as the heel part of the internal midsole is clearly thinner than other areas and therefore varies) as claimed.
In reference to claims 2-7, see figures 18 and 19.
In reference to claim 8, the substantially flat element is considered to be a Strobel board.
In reference to claims 10 and 11, see figure 19 which clearly shows the external midsole layer (250d) with a thicker heel.
In reference to claim 12, see paragraph [0105] lines 29-32 which teaches providing a sockliner.
In reference to claim 15, see outsole element 210d.
In reference to claims 21-23, see heel portion of 270 which is considered a first point and a point located forward of that point as a second point and the internal and external midsole is curved as shown in figures 18 and 19 between the points as noted below in marked up figure.
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Claim(s) 1-11, 13-15, and 21-23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Farina (2017/0095033).
Farina shows An article of footwear comprising:
an upper (100) coupled to a substantially flat element (220a-h) which is considered to form a “flat element” inasmuch as applicant has disclosed such), wherein a lower edge of the upper is directly attached to the substantially flat element and directly contacts at least a peripheral edge of the substantially flat element, such that the upper and the substantially flat element collectively define a foot compartment of the article of footwear, the foot compartment configured to contain a foot of a wearer (see figures 3, 6, 9, 12, 15, 32, 34, 36, and/or 39);
an internal midsole layer (260) positioned within the foot compartment (see figures 18 and 19), a bottom surface of the internal midsole layer in direct contact with a top surface of the substantially flat element (see figures 3, 6, 9, 12, 15, 32, 34, 36, and/or 39); and
an external midsole layer (250a-e) positioned outside of the foot compartment, a top surface of the external midsole layer coupled to a bottom surface of the substantially flat element (see figures 3, 6, 9, 12, 15, 32, 34, 36, and/or 39) a full extent of the external midsole layer extending from a forefoot region of the article of footwear (as shown in figures 3-9 the external midsole layer 250 and 250a-e extends the complete length of the footwear);
wherein the substantially flat element is configured to provide a barrier between the internal midsole layer and the external midsole layer (as shown in figures 3-9), and
wherein a thickness of the internal midsole layer varies along a length of the article of footwear (see figures 3, 6, and 9 as the heel part of the internal midsole is clearly thinner than other areas and therefore varies) as claimed.
In reference to claims 2-7, see figures 3, 6, 9, 12, 15, 32, 34, 36, and/or 39.
In reference to claim 8, element 220a-h is considered to be a Strobel inasmuch as applicant has claimed such.
In reference to claims 10 and 11, see figure 12 which clearly shows the external midsole layer (250c) with a thicker heel.
In reference to claims 13 and 14, see figure 12 which shows a plate (326) which is considered to be integral with the external midsole layer (250c).
In reference to claim 15, see outsole elements 210 and/or 210a-h.
In reference to claims 21-23, see heel portion of 260 which is considered a first point and a point located forward of that point as a second point and the internal and external midsole is curved as shown in figures 3, 6, and 9 between the points as noted below in marked up figure.
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Claim Rejections - 35 USC § 103
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.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bruce further in view of Cin (2015/0342300).
Bruce as discussed above shows an article of footwear substantially as claimed except for the internal midsole layer having a varied thickness. Bruce teaches contouring the first midsole (270) to the profile of the bottom surface of the foot (see paragraph [0106]). Cin teaches providing a first midsole layer (18, see figure 9) with a thickness that varies so that the top surface is contoured to the bottom of a foot. It would have been obvious to vary the thickness of the first midsole layer as taught by Cin in the footwear of Bruce so that the contour of the first midsole layer more closely matches the contour of a foot and thereby increases comfort and support.
Claim(s) 24 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Farina further in view of Cin (2015/0342300).
Farina as discussed above shows an article of footwear substantially as claimed except for the internal midsole layer having a varied thickness. Cin teaches providing a first midsole layer (18, see figure 9) with a thickness that varies so that the top surface is contoured to the bottom of a foot. It would have been obvious to vary the thickness of the first midsole layer as taught by Cin in the footwear of Farina so that the contour of the first midsole layer more closely matches the contour of a foot and thereby increases comfort and support.
Response to Arguments
Applicant's arguments filed 3/16/26 have been fully considered but they are not persuasive.
In reference to applicants’ arguments directed towards the phrase “substantially flat” see above interpretation in view of applicants’ arguments and specification and drawings.
In response to applicants’ arguments directed towards Bruce, it is noted that Bruce does show the substantially flat element is configured to provide a barrier between the internal midsole layer and the external midsole layer (as shown in figure 19 the internal midsole 270 is completely separated from the external midsole 250d by element 220D and 300), and teaches a thickness of the internal midsole layer varies along a length of the article of footwear (see figure 18 as the heel part of the internal midsole is clearly thinner than other areas and therefore varies) as claimed.
In response to applicants’ arguments directed towards Farina, Farina shows a full extent of the external midsole layer extending from a forefoot region of the article of footwear (as shown in figures 3-9 the external midsole layer 250 and 250a-e extends the complete length of the footwear); wherein the substantially flat element is configured to provide a barrier between the internal midsole layer and the external midsole layer (as shown in figures 3-9), and wherein a thickness of the internal midsole layer varies along a length of the article of footwear (see figures 3, 6, and 9 as the heel part of the internal midsole is clearly thinner than other areas and therefore varies) as claimed.
In response to applicants’ arguments directed towards Cin, it is first noted that Cin has only been applied as a modifying reference to teach forming an internal midsole with a varying thickness. In reference to the motivation to combine such. Bruce clearly provides such motivation Bruce teaches contouring the first midsole (270) to the profile of the bottom surface of the foot (see paragraph [0106]). Also, it is extremely well known and conventional to contour internal midsoles such as orthotics to cushion the foot, correct deformities, correct gait issues, etc.
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.
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.
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/MARIE D BAYS/Primary Examiner, Art Unit 3732
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